Complainant is Advanceit Financial Corporation, of Montréal, Québec, Canada, represented by Kaufman Larameé LLP, Canada.
Respondent is Adam Tonge, Smart1 of Windermere, Florida, United States of America / Perfect Privacy LLC, of Jacksonville, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 6, 2014. On November 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 7, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 10, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 12, 2014. The Center sent an email communication Complainant on November 13, 2014 informing Complainant that any amendments to the Complaint should reflect that when all communications were transmitted to the new Respondent. Complainant filed a second amended Complaint on November 13, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 15, 2014.
The Center appointed Isabel Davies as the sole panelist in this matter on December 30, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Domain Name was registered on May 14, 2014.
Complainant is the owner of the Canadian trademark ADVANCEIT registered on September 30, 2009, with Registration Number TMA749091.
Complainant also owns the domain name . 5. Parties' Contentions A. Complainant
The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has exclusive rights; (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
Complainant states that it is the registered owner of the Canadian trademark ADVANCEIT, duly registered in Canada since September 30, 2009 with the Canadian Intellectual Property Office. The trademark is in the form of the word "advance" in capitals with the word "it" in a double circle.
Complainant states that the registered trademark ADVANCEIT is used in relation to a large business operating in the financing of credit card receivables, a form of accounts receivables financing otherwise known as "cash advances". Complainant also states that, in operating this business, it owns the Domain Name , which hosts its website, providing a full description of the services offered under the ADVANCEIT registered trademark. Complainant states that it transacts millions of dollars weekly with its merchant clients and the public through this website.
Complainant contends that the Domain Name being used by Respondent creates significant confusion with Complainant's registered trademark and domain name to the extent that the Domain Name serves to host a website for Advanceitcapital, an identical business that claims to operate in cash advances.
Complainant states that it is unable to determine who is behind this website, as it is operating without providing any information allowing Complainant to identify the person(s) behind this site.
Complainant states that the toll free number appearing on the website is not operational.
Complainant contends that the Domain Name is being used for commercial gain while constituting a wilful and blatant violation of Complainant's trademark, goodwill and reputation, in contravention of the Trademarks Act of Canada, Complainant's common law rights and the Civil Code of Quebec. Respondent has no rights or legitimate interests in respect of the Domain Name; (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
Complainant states that there is no evidence of Respondent's use of, or demonstrable preparation to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services in North America prior to its registration;
Complainant also states that Respondent has never been commonly known by the Domain Name, that Respondent has not acquired any trademark or service mark rights in relation with the mark "Capitaladvanceit" and that Respondent is not making a legitimate non-commercial or fair use of the Domain Name and is infringing Complainant's trademark and goodwill. The Domain Namewas registered and is being used in bad faith
Complainant considers that the Domain Name was registered and is being used in bad faith by the Respondent on the basis that:
"It is probable, based on all circumstances surrounding Respondent's conduct and the grounds outlined herein, that Respondent registered and/or registered to license the Domain Name solely in order to harm the Complainant, owner of the trademark and website .
The Domain Name was registered on May 14, 2014 primarily for the purpose of disrupting the business of Complainant, to commit acts of passing-off, to attempt to lure in bad faith Complainant's clientele away from it and to the yet unidentified person exploiting the Domain Name under a so-called license from Complainant and offering competing services with those of Complainant.
By so using the Domain Name, Respondent, directly or indirectly, intentionally attempted to attract, for commercial gain, internet users to the website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website and services provided, which are identical to those of Complainant." Aggravated Bad Faith
Complainant states that it recently obtained from the Center a decision by which the domain name was found to be confusing with Complainant's domain name, and its other registered intellectual property rights, including registered trademarks (such as ADVANCEIT) and corporate name. See Advanceit Financial Corporation v. Jason Kummerl,WIPO Case No. D2014-0296.
Complainant states that it has reason to believe that the same person(s) behind the matter are the same as Respondent or Respondent's licensee.
Complainant requests that Respondent must be required immediately to transfer to Complainant the Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by Complainant to obtain relief. These elements are:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) The Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
Complainant must establish these elements even if Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party's failure to comply with any provision of or requirement under the Rules, including Respondent's failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, Complainant bears the onus of proving its case on the balance of probabilities.
Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Domain Name. The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has exclusive rights
The Panel accepts that Complainant owns the Canadian registered trademark ADVANCEIT in relation with a large business operating in the financing of credit card receivables, a form of accounts receivables financing otherwise known as "cash advances." The Panel also notes that Complainant has registered the domain name , which hosts its website and describes the services offered under the ADVANCEIT registered trademark. The Panel accepts that Complainant transacts millions of dollars weekly with its merchant clients and the public through this website, "www.".
The Panel notes that Complainant's Canadian registered trademark has a device element, namely a double circle surrounding the word "it". The word "advance" is in all capitalletters. The device element does not, in the Panel's view, detract from the main word element of the trademark.
The Panel finds that the Domain Name is confusingly similar to the trademark ADVANCEIT and that the addition of the prefix "capital" does not negate the similarity even though it is a prefix in the Domain Name. It is also accepted that the Panel need not take into account the generic Top Level Domain ("gTLD") ".com", as this does not distinguish the Domain Name.
The Panel accepts that the Domain Name being used by Respondent creates significant confusion with Complainant's registered trademark (in spite of the trademark being somewhat descriptive) and domain name. While the Panel notes that the content of a website would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the Policy, the Panel notes that the Domain Name directs to a website at "www.", which hosts an identical business that claims to operate in cash advances.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark. Respondent has no rights or legitimate interests in respect of the Domain Name
The Panel accepts that there is no evidence of Respondent's use of, or demonstrable preparation to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services; that Respondent has never been commonly known by the Domain Name and that Respondent has not acquired any trademark or service mark rights in relation with the mark "Capitaladvanceit".
The Panel also accepts that Complainant has demonstrated that Respondent is not making a legitimate non-commercial or fair use of the Domain Name.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Namewas registered and is being used in bad faith.
The Panel accepts that, on the balance of probabilities based on the circumstances surrounding Respondent's conduct and the grounds outlined herein, Respondent registered the Domain Name solely in order to harm Complainant, owner of the trademark and website "www." and that the Domain Name was registered primarily for the purpose of disrupting the business of Complainant, to attempt in bad faith to lure Complainant's clientele away from it and to offer competing services with those of Complainant.
The Panel also accepts that, by so using the Domain Name, Respondent, directly or indirectly, intentionally attempted to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website and services provided, which are identical to those of Complainant.
The Panel takes into account that the Domain Name is , but the website to which it directs is for "www.". This adds to the Panel's view that the Domain Name was registered and is being used in bad faith.
The Panel notes Complainant's contention that there is a connection between the previous WIPO decision relating to (see Advanceit Financial Corporation v. Jason Kummerl, WIPO Case No. D2014-0296) but, in the circumstances, the Panel does not consider it necessary to make any findings relating to this.
The Panel accepts that the toll free number appearing on the website is not operational but the website appears to be operational.
In view of the above, the Panel therefore finds that the Domain Name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Isabel Davies
Sole Panelist
Date: January 11, 2015
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