Capital One Financial Corp. v. Scott Adams
Claim Number: FA1904001838843
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Scott Adams (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone.guru>, registered with Gandi SAS.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2019; the Forum received payment on April 15, 2019.
On April 16, 2019, Gandi SAS confirmed by e-mail to the Forum that the <capitalone.guru> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@capitalone.guru. Also, on April 17, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the mark CAPITAL ONE to manage and market its banking and financial services business.
Complainant holds a registration for the CAPITAL ONE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,065,991, registered May 27, 1997, most recently renewed as of June 30, 2017.
Respondent registered the domain name <capitalone.guru> on or about November 2, 2016.
The domain name is confusingly similar to Complainant’s CAPITAL ONE trademark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the CAPITAL ONE mark in any manner.
Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent is passively holding the disputed domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered the domain name using a privacy service to mask its identity.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.” But see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the CAPITAL ONE trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for […its mark…] demonstrate its rights in such mark for the purposes of Policy ¶4(a)(i).
Turning to the central question posed by Policy ¶4(a)(i), we conclude from a review of the record that Respondent’s <capitalone.guru> domain name is confusingly similar to Complainant’s CAPITAL ONE trademark. The domain name incorporates the mark in its entirety, merely eliminating the space between its terms and adding the generic Top Level Domain (“gTLD”) “.guru.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
See, for example, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum April 30, 2007), a panel there finding that:
[T]he elimination of spaces between terms [of the mark of another in creating a domain name based on that mark] and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)).
Under Policy 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <capitalone.guru> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <capitalone.guru> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the CAPITAL ONE mark in any manner. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Scott Adams,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner); see also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that it appears from the Complaint, and without objection from Respondent, that Respondent has failed to make any active use of the <capitalone.guru> domain name in the approximately two and a half years since it was first registered. It is well settled that a failure to make any active use of a domain name for an extended period after its registration is itself a form of use. See, for example, the early pronouncement on the point in Telstra Corp. Ltd. v Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000):
It is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used ....
It is equally well established that such inactive use is, in the circumstances described in the Complaint, neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate or noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.
Those circumstances include not only that the domain name does not resolve to an active website, but also that there is no evidence that an active website is in the process of being established, and that Complainant’s trademark is well and widely known in commerce, that Respondent has taken steps to conceal its identity in registering the domain name, and that it is difficult, if not impossible, to conceive of any legitimate employment that might be made of the domain name given its provenance. See again Telstra Corp., supra. See also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that a UDRP respondent’s non-use of disputed domain names demonstrated that that respondent was not using them to make a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)).
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy ¶4(a)(ii).
Respondent’s passive holding of the <capitalone.guru> domain name for a period of years in the circumstances set out in the Complaint is indicative of its bad faith in registering and using the domain name. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).
It is also plain from the record that Respondent knew of Complainant and its rights in the CAPITAL ONE mark when it registered the <capitalone.guru> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Forum September 5, 2007) (finding that a UDRP respondent registered a domain name in bad faith within the contemplation of Policy ¶ 4(a)(iii), having first concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name.").
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <capitalone.guru> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 17, 2019
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