Capital One Financial Corp. v. Chris Williams / Mt Pleasant Sunset
Claim Number: FA1904001838844
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Chris Williams / Mt Pleasant Sunset (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonecafe.com>, registered with Moniker Online Services LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2019; the Forum received payment on April 15, 2019.
On April 17, 2019, Moniker Online Services LLC confirmed by e-mail to the Forum that the <capitalonecafe.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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@capitalonecafe.com. 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 Debrett G. Lyons as Panelist.
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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in CAPITAL ONE. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides financial and credit card services by reference to the trademark CAPITAL ONE;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) as Reg. No. 2,065,991, registered May 27, 1997, for the trademark CAPITAL ONE;
3. the disputed domain name was registered on April 19, 2017 and resolves to a webpage which states: “This account has been terminated”. There is no other evidence of use of the domain name; and
4. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of the trademark CAPITAL ONE with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain name with the trademark the gTLD, “.com”, can be disregarded (see, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain name then differs from the trademark by addition of “cafe”, a term that Complainant characterizes as “generic” without any explanation as to why that might be so. The Complaint has little reasoning of substance on this matter of confusing similarity and simply relies on the citation of earlier decisions under this Policy in Complainant’s favour. Those decisions all concerned domain names composed of the trademark with the addition of terms in some way linked to the financial services industry. On the evidence before the Panel the word “cafe” has no apparent connection with the business conducted under the trademark. Nonetheless, the Panel finds that in this case the trademark is the distinctive and dominant part of the disputed domain name. The Panel therefore finds the domain name confusingly similar to the trademark.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WhoIs information shielded the name of the actual owner of the domain name but in consequence of these proceedings the Registrar has identified “Chris Williams / Mt Pleasant Sunset” as the domain name registrant. The Panel finds no evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. Further, Complainant states that there is no association between the parties. Complainant provides evidence that the domain name redirects to a webpage with no content other than the statement: “This account has been terminated”. The Panel notes that the WhoIs information shows that the domain name was due for renewal on April 19, 2019 but that the evidence accompanying the Complaint includes a screenshot dated March 8, 2019 of the webpage with this message. The possible expiration of the domain name does not then seem to explain the message but, in any event, the Panel finds no use of the domain name in respect of a bona fide offering of goods or services or evidence of a legitimate noncommercial or fair use.
A prima facie case has been made and so the onus shifts to Respondent. In the absence of a Response, the Panel finds that Respondent has not discharged the onus and finds the Respondent has no rights or interests.
Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Complaint makes no specific argument in respect of paragraph 4(a)(iii) and the Panel is reminded that, even in the absence of a Response, Complainant must meet the burden of proof of bad faith registration and use. Complainant makes essentially no effort to establish those matters and another panel may have refused the Complaint (see, for example, Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) holding that “Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”).
In place of reasoned submission, the Complaint once more simply lists a string of citations of earlier cases involving Complainant. Those citations are, again, of questionable relevance with the exception of the case of Capital One Financial Corp. v. DCH, FA 487835 (Forum Apr. 9, 2013) where the panellist stated that “the fact Respondent originally registered the domain name with a privacy service in a commercial context raises the rebuttable presumption of bad faith registration and use…”.
Otherwise, the Complaint does not address the fact that what has been added to the trademark, namely the word “cafe”, is so divorced in meaning from any obvious connotation of the trade mark as to put into question Respondent’s actual intentions for the domain name.
In the circumstances the Panel has been left to draw its own assessment of the evidence and in doing so notes (as did Complainant) that the disputed domain name has not been used since its registration in April 2017. The Panel notes that the evidence includes the Declaration of Complainant’s Senior Counsel who exhibits “registrations for the CAPITAL ONE mark in conjunction with other terms…” and notes that those composite marks include, amongst many others of no interest, registrations comprising the trade mark in combination with terms such as “BOWL WEEK”, “CUP”, “ATHLETIC CHALLENGE” and “JAMFEST”.
Although there is no submission on the point, nor any positive sworn statement from the Declarant which might assist the Panel, a reasonable inference might be drawn that Complainant has sponsored or otherwise supported activities or events by reference to the trademark which are well outside its core credit card business. Whilst there is nothing at all which might point towards Complainant’s use of the trademark, past or future, in connection with food or beverage services, all that can be said at its highest is that an ancillary offering of that kind is not beyond imagination.
That said, the Panel will make it plain here that had the hypothetical domain name <capitolonecafe.com> been at issue and the evidence been otherwise the same, the complaint would have failed utterly. However, as it stands, the Panel is satisfied that the trademark would satisfy the requirements for a common law trade mark and is indicative of Complainant and its business before anything else. The question then arises as to why Respondent would in good faith choose to include the trademark in the disputed domain name. Absent a Response and given the negative inference that might be drawn from Respondent’s choice to cloak its ownership with a privacy service, the Panel finds registration in bad faith.
There being no use of the domain name, the Complaint might nonetheless succeed if the Panel finds so-called passive holding in bad faith in line with the cases which have followed the reasoning first laid out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel so finds passive holding since it considers that case to be directly applicable. Accordingly, the Panel finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonecafe.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 9, 2019
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