The Complainant is AARC, LLC of Spartanburg, South Carolina, United States of America ("United States"), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
The Respondent is Mr Sabal, Advance America Online of Pune, India. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 30, 2018. On May 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 25, 2018. Following an email from the Respondent of the same day, the Center sent a Notification of Suspension on July 2, 2018, following the Complainant's request in order to explore settlement options. Upon the Complainant's request to reinstitute the proceedings, the Center notified the Parties of such reinstitution on August 2, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on August 3, 2018. 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 Complainant is a company based in Spartenburg, South Carolina, United States. It began transacting business under the ADVANCE AMERICA mark in 1997, in connection with a range of financial services including short-term consumer loans. The Complainant is the owner of registered United States trade mark, No.3,005,984 for ADVANCE AMERICA. This trade mark was registered on October 11, 2005, in international class 36, and national classes 100, 101 and 102 for various financial services, including short-term consumer loans. The Complainant makes use of its trade mark, including in signage, advertisements, and online.
The Complainant acquired the domain name in 1999 and this resolves to a website offering its services online. The Complainant now operates in over 2,000 locations in the United States and provides online lending services in at least 28 states in the United States.
The disputed domain name was registered by the Respondent on March 11, 2013. It points to a website headed "advance america online". The words "advance america"" are bold type, the word "online" is faint. To the left of these words is the dollar sign: "$". Beneath this is a photograph of a smiling woman and the words "Apply Now", "Fast loans up to $1,000" and "100% Approval Payday Advance in less than 1 HOUR! Even with BAD CREDIT".
The Complainant sent a cease and desist letter to the Respondent on August 4, 2017, requesting that it cease using its ADVANCE AMERICA trade mark. The Complainant did not receive a reply. 5. Parties' Contentions A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights, namely its United States service mark, full details of which are given above. The disputed domain name is functionally identical and confusingly similar to this mark. It incorporates the entirety of the mark, save that it adds the generic word "online". The addition of this word does not avoid confusing similarity; see Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) v. Privacy Protect, LLC (PrivacyP) / max pane, kfc,WIPO Case No. D2017-2076.
Moreover, when assessing whether a domain name is similar or identical to a trade mark, the generic Top Level Domain ("gTLD"), that is ".com" in the case of the disputed domain name, is not taken into account.
The Complainant asserts also that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its ADVANCE AMERICA trade mark. The Respondent is not commonly known by the disputed domain name. The Respondent therefore lacks rights or interests in it. Once a complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, the burden shifts to the respondent to show that it has rights or interests in the domain name in issue; see Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261.
Finally, the Complainant says that the disputed domain name was registered and used in bad faith. A panel may consider the totality of the circumstances when conducting the analysis of bad faith under paragraph 4(a)(iii) of the Policy; see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. The Respondent has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of its services. This is prima facie evidence of bad faith registration and use. The content of the Respondent's website only adds to the likelihood of confusion with the Complainant as to the source or sponsorship of the goods and services offered because the most prominent words on the home page of the website to which the disputed domain name resolves are "advance america", with the word "online" shown in contrasting font and fading in and out. Furthermore, lower down the home page, the word "online" is positioned below "advance america", reinforcing the impression that the Respondent's trading style is the same as that of the Complainant.
These layout features are evidently intended to confuse the consumer into thinking that this may be the Complainant's website. Moreover, the services offered by the Respondent are essentially the same as those provided by the Complainant.
It is evident that the Respondent's purpose is to disrupt the business of the Complainant and intentionally to divert customers from the Complainant for its own commercial gain. Its conduct accordingly falls within the circumstances outlined at paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
Furthermore, the Respondent should be considered to have had constructive notice of the Complainant's ADVANCE AMERICA trade mark. Constructive notice of a complainant's rights at the time of registration of a domain name has been held by prior panels to constitute strong evidence of bad faith; see E. & J. Gallo Winery v. Oak Investment Group,WIPO Case No. D2000-1213. In addition, there is authority that registration of a domain name that is confusingly similar to a well-known trade mark is itself evidence of bad faith registration and use; see Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942. Finally, the Respondent's failure to reply to the Complainant's cease and desist letter should be considered as pointing to bad faith registration and use. B. Respondent
In the email communication of June 25, 2018, the Respondent stated that they had never used any company name to promote their website and that they had been using the disputed domain name "from last 5 years". Furthermore, it indicated that they are "generating leads as an affiliate with Direct online lenders, it'll be a great loss for our organisation as a domain despute cause we're working with this domain from last couple years". Additionally, the Respondent stated that if somehow "any company feels we're affecting their business module or using their business name to promote our website. I am ready to transfer this domain to u or that organisation." 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided a copy of its trade mark for ADVANCE AMERICA, details of which are set out above. It has rights in this name.
When considering whether the disputed domain is confusingly similar to the Complainant's trade mark, the gTLD ".com" is disregarded as this is a technical requirement of registration. Accordingly, the only difference between the disputed domain name and the Complainant's trade mark is the descriptive word "online". As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity.
Moreover, as explained at section 1.7 of the WIPO Overview 3.0: "[…] where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing". See also Migros Cooperatives) v. Privacy Protect, LLC (supra).
The Panel accordingly finds that the disputed domain name is confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely:
(i) before any notice to it of the dispute, it had used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Considering these circumstances in reverse order, the website to which the disputed domain name resolves contains pay-per-click links and is commercial in character. Accordingly, paragraph 4(c)(iii) is inapplicable. Paragraph 4(c)(ii) is also inapplicable in that there is no evidence that the Respondent is commonly known by the disputed domain name. Lastly, not only has the Respondent used a domain name confusingly similar to the Complainant's trade mark to offer services identical to those of the Complainant, but its purported offer of services under the "Advance America Online" brand is being made by a registrant based in India, with no evident connection to the United States, despite this being the country in which its services are purportedly being offered. Such an offer does not constitute a bona fide offering of goods or services.
Section 2.1 of the WIPO Overview 3.0 explains that; "[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element".
The Complainant has made out a prima facie case under paragraph 4(c) of the Policy. The burden of production therefore shifts to the Respondent. The Panel does not find that the email of June 25, 2018, rebuts the Complainant's prima facie case. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent's conduct falls within the scope of this circumstance. The use to which the Respondent has put the disputed domain name, namely purporting to offer services substantially identical to those offered by the Complainant and using a confusingly similar trading style, point to the Respondent having registered the disputed domain name with that objective in mind. Such registration and use can only have been with the intention of confusing Internet users into thinking that the Respondent's services were those of the Complainant or were connected with them in some way. See Barclays Bank PLC v. PrivacyP / Sylvia Paras,WIPO Case No. D2011-2011, a decision on similar facts, where the panel reached the same conclusion.
For this reason, the Panel finds that the disputed domain name has been registered and is being used by the Respondent 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 the Complainant.
Antony Gold
Sole Panelist
Date: August 17, 2018
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