Capital One Financial Corp. v. Marla Kossick
Claim Number: FA1905001842405
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, US. Respondent is Marla Kossick (“Respondent”), represented by Tim Byron of Byron Raphael LLP, California, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <primecapitalone.com>, registered with GoDaddy.com, 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2019; the Forum received payment on May 9, 2019.
On May 13, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <primecapitalone.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@primecapitalone.com. Also on May 15, 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 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates in the insurance and financial services industry. Complainant has rights in the CAPITAL ONE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626 registered Aug. 13, 1996). See Compl. Ex. A, Attachment 1. Respondent’s <primecapitalone.com> domain name is identical or confusingly similar to Complainant’s CAPITAL ONE mark because it wholly incorporates Complainant’s CAPITAL ONE mark, and merely adds the generic term “prime” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <primecapitalone.com> domain name. Respondent is not authorized to use Complainant’s CAPITAL ONE mark and is not commonly known by the disputed domain name. See Compl. Ex. B. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because the webpage is inactive. See Compl. Ex. C.
Respondent registered and uses the <primecapitalone.com> domain name in bad faith because Respondent’s disputed domain name resolves to an inactive webpage. See Compl. Ex. C. Finally, Respondent had actual knowledge of Complainant’s CAPITAL ONE mark prior to registering the disputed domain name.
B. Respondent
Respondent submitted a response on June 10, 2019. Respondent operates in the investment management industry. Respondent claims rights in the PRIMECAP mark based upon its registration of the mark with the USPTO (e.g. Reg. No. 2,965,219 registered Jul. 5, 2005) and has used the PRIMECAP mark since 1983. See Compl. Ex. A, Attachment 1. Respondent registered the <primecapitalone.com> domain name defensively to avoid confusion in the marketplace; as a result, Respondent has rights and legitimate interests in the <primecapitalone.com> domain name.
Complainant contacted Respondent demanding transfer of the <primecapitalone.com> domain name. Respondent conveyed their concerns about confusion between Respondent’s PRIMECAP mark and Complainant’s CAPITAL ONE mark and offered written assurances Respondent would not use the disputed domain name; alternatively, Respondent offered to transfer the disputed domain name to Complainant if Complainant agreed never to use the disputed domain name and compensate Respondent for costs. As a final option, Respondent offered to transfer the disputed domain name to Complainant on the condition that Complainant provided advance notice of use of the disputed domain name. Complainant rejected all three offers and makes no mention of the Respondent’s good faith efforts to resolve the disputed.
Respondent’s disputed domain name is not confusingly similar to Complainant’s CAPITAL ONE mark because the addition of the term “prime” does not have a sufficient secondary meaning. Furthermore, Complainant has no rights in the <primecapitalone.com> domain name because Respondent’s rights are superior to Complainant’s rights and Respondent has legitimate interests in the disputed domain name.
Complainant failed to establish that Respondent registered and used the <primecapitalone.com> domain name in bad faith. To the contrary, Complainant has exhibited bad faith in its omission in its Complaint of Respondent’s reasonable attempts to resolve the dispute. Respondent sole goal in registering the disputed domain name was to passively hold the disputed domain name to avoid confusingly similar domain names by competitors. Finally, Complainant engages in reverse domain name hijacking.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.
The Panel finds that the disputed domain name, <primecapitalone.com>, is confusingly similar to Complainant’s valid and subsisting trademark, CAPITAL ONE. Complainant has more than adequately established its rights and interests in and to this trademark.
Respondent arrives at the disputed domain name by merely adding the word “prime” to the beginning of Complainant’s trademark and appending a g TLD, “.com” to the end of the mark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
Respondent claimed that Respondent’s trademark, PRIMECAP, is not confusingly similar to Complainant’s trademark, CAPITAL ONE and, therefore, Respondent’s registration of <primecapitalone.com> is somehow derivative of Respondent’s trademark and, therefore, not confusingly similar to CAPTAL ONE. While the Panel agrees that PRIMECAP may not be confusingly similar to CAPTIAL ONE, that is not the mark at issue. Whether Respondent was legitimately attempting to engage in defensive domain name registration to prevent others from using and registering the disputed domain name that Respondent claims is derivative of Respondent’s trademark or not, it is the resulting domain name which this Panel must assess in determining if there is confusing similar to Complainant’s trademark.
Further, Respondent claims that there have been good faith negotiations with Complainant about voluntarily transferring the disputed domain name to Complainant. Respondent seems to feel Complainant has somehow acted improper by not disclosing these negotiations to the Panel. However, the Panel feels that Complainant did Respondent a favor by not disclosing the contents of these negotiations. By Respondent’s own description of these negotiations, Respondent attempted to extort sub-optimal trademark use conduct from Complainant. Other than the use of the disputed domain name, Respondent has no legitimate right to claim how Complainant should, does or doesn’t use the trademark CAPTAL ONE.
Also, Respondent’s argument that the word “prime” as it appears in the disputed domain name does not have secondary meaning and, therefore, it is free to use it as it may is misplaced. Secondary meaning in UDRP cases is only relevant to establish a Complainant has trademark rights even if it has not registered its claimed trademark. The better claim would be, for example, that the addition of the word “prime” sufficiently distinguishes the disputed domain name from Complainant’s CAPITAL ONE. It is not clear, but even if Respondent is attempting to make this claim, it would fail. Given the fame of Complainant’s mark, merely adding a related, descriptive word would not distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because the webpage is inactive. See Compl. Ex. C.
Respondent seems to presume that its legitimate rights in and to PRIMECAP gives it not only rights, but superior rights, to <primecapitalone.com>. This argument, too, is spurious. The issue before this Panel is not the use of “prime” as an independent mark. The issue here is whether Respondent has rights or legitimate interests in using the word “prime” in connection with Complainant’s precise trademark. The Panel finds that it does not.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant does not make any Policy ¶ 4(b) arguments. In the absence of any ¶ 4(b) arguments the Panel may look beyond Policy ¶ 4(b) to the totality of the circumstances when analyzing bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Respondent claims that it registered the disputed domain name for defensive reasons so that others would not be able to use the disputed domain name in competition with Respondent. Regardless of whether that is true or not, the resulting disputed domain name entirely captures Complainant’s trademark. In other words, Respondent engaged in good faith efforts to achieve a bad faith outcome. Using another’s trademark in its entirety is bad faith even if it was done to avoid other competitors.
The Panel therefore finds that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the CAPITAL ONE mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the <primecapitalone.com> domain name. Established fame and notoriety of a mark may as well as use of a mark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Thus, the Panel finds that Respondent had actual notice of Complainant’s rights in the CAPITAL ONE mark under Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent registered and uses the <primecapitalone.com> domain name in bad faith because Respondent’s disputed domain name resolves to an inactive webpage. See Compl. Ex. C. Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). 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).”). Thus, the Panel finds that Respondent registered and uses the <primecapitalone.com> domain name in bad faith because Respondent’s disputed domain name resolves to an inactive webpage.
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <primecapitalone.com> domain name, of its rights to use the disputed domain name. Respondent claims rights in the PRIMECAP mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 2,965,219 registered Jul. 5, 2005) and has used the PRIMECAP mark since 1983. See Compl. Ex. A, Attachment 1. Complainant contacted Respondent demanding transfer of the <primecapitalone.com> domain name. Respondent conveyed their concerns about confusion between Respondent’s PRIMECAP mark and Complainant’s CAPITAL ONE mark and offered written assurances Respondent would not use the disputed domain name; alternatively, Respondent offered to transfer the disputed domain name to Complainant if Complainant agreed never to use the disputed domain name and compensate Respondent for costs. As a final option, Respondent offered to transfer the disputed domain name to Complainant on the condition that Complainant provided advance notice of use of the disputed domain name. Complainant rejected all three offers and makes no mention of the Respondent’s efforts to resolve the dispute.
As the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) and other elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <primecapitalone.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: June 13, 2019
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