Capital One Financial Corp. v. Stefan Hansmann / Nanjing Imperiosus Technology Co. Ltd
Claim Number: FA1905001842256
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Stefan Hansmann / Nanjing Imperiosus Technology Co. Ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloonebank.com>, registered with CommuniGal Communication Ltd..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2019; the Forum received payment on May 9, 2019.
On May 16, 2019, CommuniGal Communication Ltd. confirmed by e-mail to the Forum that the <capitaloonebank.com> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. 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 May 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@capitaloonebank.com. Also on May 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 June 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Capital One Financial Corp., uses its trademark CAPITAL ONE BANK in connection with a broad spectrum of financial products and services to consumers, small businesses and commercial clients. These offerings include banking and credit cards. Complainant has rights in the CAPITAL ONE BANK mark based on extensive use in commerce since 1988 as well as registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <capitaloonebank.com> domain name, registered on April 27, 2016, is confusingly similar to Complainant’s CAPITAL ONE BANK mark, as it contains a simple misspelling or typographical error that an Internet user might make when typing in Complainant’s mark – i.e., the addition of a second letter “o”.
Respondent has no rights or legitimate interests in the <capitaloonebank.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CAPITAL ONE BANK mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, because there is no resolving website from the <capitaloonebank.com> domain name, Respondent is passively holding the disputed domain name.
Respondent registered and is using the <capitaloonebank.com> domain name in bad faith as it is passively holding the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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 claims rights in the CAPITAL ONE BANK mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) As Complainant has submitted into evidence copies of a number of its registration certificates for the mark, the Panel holds that Complainant’s registration of the CAPITAL ONE BANK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <capitaloonebank.com> domain name is confusingly similar to the CAPITAL ONE BANK mark, as it contains a simple misspelling or typographical error that an Internet user might make when typing in Complainant’s mark. Generally, the introduction of a typographical error to a complainant’s mark when registering a dispute domain name is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Klein Tools, Inc. v. chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). The Panel notes that, while Complainant makes no argument as to Respondent’s addition of the generic top-level domain (“gTLD”) “.com”, such an addition is irrelevant under a Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”) Here, Respondent added an extra letter “o” and the gTLD “.com” to Complainant’s mark when registering the disputed domain name. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s CAPITAL ONE BANK mark per Policy ¶ 4(a)(i).
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). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <capitaloonebank.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the CAPITAL ONE BANK mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the <capitaloonebank.com> domain name as “Stefan Hansmann / Nanjing Imperiosus Technology Co. Ltd” and no information of record indicate that Respondent is known otherwise or that it was authorized to register a domain name with Complainant’s mark. In the absence of a response or other submission by the Respondent, the Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <capitaloonebank.com> domain name.
Complainant further argues Respondent’s lack of rights and legitimate interests in the <capitaloonebank.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name does not resolve to any website and is thus inactive. Generally, passive holding of a domain name is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot of the resolving website associated with the disputed domain name which displays the message “This site can’t be reached”. The Panel therefore determines that, based upon passive holding of the <capitaloonebank.com> name, Respondent does not have rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent’s bad faith is indicated by its passive holding of the <capitaloonebank.com> domain name. While Complainant has not made arguments under Policy ¶ 4(b), such elements are not exclusive and Panels may consider all of the circumstances of a given case, including passive holding, in making its bad faith analysis. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”); Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”) Here, the website associated with the disputed domain name states “This site can’t be reached.” The Panel therefore finds that Respondent is passively holding the domain name, which is confusingly similar to Complainant’s mark, and that this indicates bad faith registration and use under Policy ¶ 4(a)(iii).
As further evidence of Respondent’s bad faith, Complainant points out that “Respondent registered the disputed domain name with a privacy service.” It has been held that use of a privacy service may indicate bad faith if it is “employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name” and for the respondent to “avoid being notified of a UDRP proceeding filed against it….” WIPO Overview 3.0, par. 3.6. See also Beijing Qunar Information Technology Co., Ltd. v. Premium Registration Service / Zheng ZhongXing, Case No. D2013-0281 (WIPO, 2013) (“the fact that the disputed domain name was registered anonymously and protected by Premium Registration Service is consistent with bad faith in this Panel’s view”). Here, the WHOIS record for the disputed domain name shows the phrase “REDACTED FOR PRIVACY” in many fields including Registrant Name, Registrant Street, Registrant Phone, and others. However, the Registrant Organization field does indicate Respondent’s identity as noted above. To the Panel it seems most likely that the concerned registrar for the disputed domain name is hiding much of the Respondent’s information in response to the European Union’s General Data Protection Regulation (“GDPR”). There is no evidence in the record to suggest that Respondent specifically availed itself of a typical WHOIS privacy or proxy service. As such, the Panel declines to attribute the redaction of information in the WHOIS record to Respondent and so the general guideline that use of a privacy service may indicate bad faith does not apply in this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloonebank.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 8, 2019
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