Usaplatinumplus.com

The timeline behind usaplatinumplus.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION FIA Card Services, National Association v. Impulse Marketing Group, Net OPS Claim Number: FA0703000944261 PARTIES Complainant is FIA Card Services, National Association (“Complainant”), represented by Randel S. Springer, of Womble Carlyle Sandridge & Rice, PLLC, One West Fourth Street, Winston-Salem, NC 27101. Respondent is Impulse Marketing Group, Net OPS (“Respondent”), represented by Douglas M. Isenberg, of The GigaLaw Firm, 5 Concourse Parkway, Suite 3000, Atlanta, GA 30328. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <usaplatinumplus.com>, registered with Register.com. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. John J. Upchurch as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2007. On March 21, 2007, Register.com confirmed by e-mail to the National Arbitration Forum that the <usaplatinumplus.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On March 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 12, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@usaplatinumplus.com by e-mail. The parties filed a Joint Request to Stay the Administrative Proceeding on April 9, 2007. The National Arbitration Forum granted the parties’ request, giving them a period of forty-five days until May 24, 2007, to either settle the dispute or request a lift of the stay, or else the Forum would dismiss the Complaint without prejudice. On May 23, 2007, Complainant requested a removal of the stay on the proceeding. The National Arbitration Forum granted Complainant’s request on the same date and set a new deadline of May 29, 2007 for Respondent to file a Response. A timely Response was received and determined to be complete on May 29, 2007. Complainant filed an Additional Submission on June 4, 2007. Respondent filed an Additional Submission on June 11, 2007. On June 4, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant 1. Complainant alleges that there is a “confusing similarity” between its valid trademark registrations and the subject domain name <usaplatinumplus.com>. 2. Complainant alleges that Respondent has “no rights or legitimate interests” in the disputed domain name. 3. Complaint alleges that the disputed domain name was “registered and used in bad faith.” B. Respondent 1. Respondent alleges that the domain name <usplatinumplus.com> is not identical or confusingly similar to Complainant’s trademarks. 2. Respondent alleges that Respondent should be considered as having rights or legitimate interests in respect of the disputed domain name. 3. Respondent alleges that the domain name <usaplatinumplus.com> should not be considered as having been registered and used in bad faith. C. Additional Submissions Complainant: Complainant reiterated its arguments regarding confusing similarity between its marks and the disputed domain name and registration and use in bad faith; Complainant proffered a Google search exhibit and analysis to support its public identification with the “platinum plus” mark. Respondent: Respondent asserts that the brief interval between Complainant’s trademark registration and Respondent’s domain name registration diminish the presumption of constructive knowledge of the mark on the part of Respondent; it asserts that Complainant’s failure to rebut the Response with respect to “rights or legitimate interests” should be construed as a concession; and that Complainant’s Google search analysis was flawed. Further, Respondent asserted that the panel should not rely solely upon “constructive knowledge” in the absence of supporting proof in considering an inference of bad faith. FINDINGS The panel finds that Complainant failed to establish a lack of rights or legitimate interests in the disputed domain name on the part of Respondent; and, accordingly, the requested relief should be denied. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has provided evidence of its valid trademark registrations for the PLATINUM PLUS (Reg. No. 2,531,097 issued January 22, 2002) and WORLD CLASS PLATINUM PLUS (Reg. No. 2,518,949 issued December 18, 2001) marks, both of which it holds with the United States Patent and Trademark Office (“USPTO”). The Panel holds that these trademark registrations demonstrate Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority). Complainant alleges that the <usaplatinumplus.com> domain name is an exact replica of its PLATINUM PLUS mark, but for the addition of the geographic identifier “usa” and the generic top-level domain (“gTLD”) “.com,” as well as the elimination of the space between the terms of the mark. The Panel finds that none of these alterations sufficiently distinguishes the disputed domain name from the mark and concludes that the <usaplatinumplus.com> domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). Accordingly, the Panel does find that the disputed <usaplatinumplus.com> domain name is identical or confusingly similar to Complainant’s marks. Rights or Legitimate Interests Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”). Complainant argues that Respondent is a competitor of Complainant in the financial services industry and that Respondent is not commonly known by the disputed domain name. Respondent concedes the point, but asserts its offering of bona fide services for several years prior to notice of this dispute has established rights or legitimate interests in the domain name. Respondent asserts that it is a financial and marketing services company that offers “subprime credit cards, catalog cards, automobile loans and financing, payday loans and credit repair” to customers. Respondent further asserts that it has continuously used the <usaplatinumplus.com> domain name in connection with its business since 2002. This is unrebutted. The Panel finds that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Martello v. Cockerell and Assoc., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services); see also Secondary School Admission Test Board, Inc. v. Severino, FA 408094 (Nat. Arb. Forum Mar. 24, 2005) (holding that the respondent’s use of the <prepssat.com> domain name was a legitimate use because respondent provided services designed to help students prepare for the SSAT, also the complainant’s mark); see also Am. Online, Inc. v. West, FA 638005 (Nat. Arb. Forum Mar. 20, 2006) (finding that the respondent was making a bona fide offering of goods or services at the <aol-city.com> domain name where it had used the domain name for over five years in connection with a real estate business in the UK and there was little chance of consumer confusion). The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)); see also The Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name). Accordingly, the Panel finds that Respondent has established rights or legitimate interests in the disputed domain name. Registration and Use in Bad Faith The Panel finds it unnecessary to address this element given its finding in favor of the Respondent with respect to item (b) above. DECISION Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. John J. Upchurch, Panelist Dated: June 18, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.