Capital One Financial Corp. v. Hildegard Gruener
Claim Number: FA1905001843679
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Hildegard Gruener (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capitalonelocationsdallas.com>, <capitalonelocationsflorida.com>, <capitalonelocationsincalifornia.com>, <capitalonelocationsinny.com>, <capitalonelocationsintexas.com>, <capitalonelocationsnearme.com>, and <capitalonelocationsneworleans.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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on May 17, 2019; the Forum received payment on May 17, 2019.
On May 20, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitalonelocationsdallas.com>, <capitalonelocationsflorida.com>,<capitalonelocationsincalifornia.com>, <capitalonelocationsinny.com>,<capitalonelocationsintexas.com>, <capitalonelocationsnearme.com>, and <capitalonelocationsneworleans.com> domain names (the Domain Names) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 21, 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@capitalonelocationsdallas.com, postmaster@capitalonelocationsflorida.com, postmaster@capitalonelocationsincalifornia.com, postmaster@capitalonelocationsinny.com, postmaster@capitalonelocationsintexas.com, postmaster@capitalonelocationsnearme.com, postmaster@capitalonelocationsneworleans.com. Also on May 21, 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 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 Names be transferred from Respondent to Complainant.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The information furnished to the Forum by the registrar lists “Hildegard Gruener” as the registrant and gives the same registrant address and contact information for all seven of them. On this evidence, the Panel finds that all the Domain Names involved in this proceeding are registered to the same person or entity and will proceed as to all of them.
A. Complainant
Complainant is a well-known provider of banking and financial services. It has rights in the CAPITAL ONE mark based upon numerous registrations of that mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,442,400, registered June 3, 2008), and with governmental trade mark authorities in other countries. Respondent’s Domain Names are confusingly similar to Complainant’s CAPITAL ONE mark as six of them incorporate that mark in its entirety, merely adding the terms “locations” or “locationsin,” the names of various cities and states in the United States, and the “.com” generic top-level domain (“gTLD”). The seventh Domain Name incorporates Complainant’s mark and adds the term “locationsnearme” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant licensed, authorized, or otherwise permitted Respondent to use its CAPITAL ONE mark. Furthermore, Respondent is not using any of the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <capitalonelocationsdallas.com>, <capitalonelocationsflorida.com>, <capitalonelocationsincalifornia.com>, <capitalonelocationsinny.com>, <capitalonelocationsintexas.com>, and <capitalonelocationsneworleans.com> Domain Names resolve to webpages featuring advertisements, commercial search engines, and sponsored links to third party websites, some of which are owned by Complainant’s competitors, and the <capitalonelocationsnearme.com> Domain Name resolves to an inactive web site.
Finally, the Domain Names were registered and are being used in bad faith. Respondent is using the <capitalonelocationsdallas.com>, <capitalonelocationsflorida.com>, <capitalonelocationsincalifornia.com>, <capitalonelocationsinny.com>, <capitalonelocationsintexas.com>, and <capitalonelocationsneworleans.com> Domain Names to divert Internet customers seeking Complainant’s website to web pages featuring advertisements, directory websites and commercial search engines that display third-party links to Complainant’s competitors. The web sites resolving from these Domain Names also attempt to pass off as Complainant’s web sites. Further, the <capitalonelocationsnearme.com> Domain Name resolves to an inactive web site. Also, Respondent also registered the Domain Names with a privacy service. Finally, since Complainant’s mark has been held to be famous, copying that mark into the Domain Names constitutes bad faith.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO 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”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The CAPITAL ONE mark was registered to Complainant with the USPTO (Reg. No. 3,442,400) on June 3, 2008. Complaint Exhibit A-1. Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s Domain Names are confusingly similar to Complainant’s mark, as they incorporate the mark in its entirety, six of them merely adding the terms “locations” or “locationsin,” the names of various cities and states in the United States, and the “.com” gTLD. The seventh Domain Name incorporates Complainant’s mark in its entirety, merely adding the terms “locationsnearme” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). The use of descriptive and geographic terms is not sufficient to distinguish a domain name from a complainant’s mark. Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within all of the Domain Names, and this establishes their confusing similarity to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the CAPITAL ONE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made 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) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is 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 asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not commonly known by the Domain Names, (ii) Complainant has not authorized Respondent to use the CAPITAL ONE mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or other fair use because six of them resolve to web sites that feature advertisements, commercial search engines, and sponsored links to third party websites, some of which are owned by Complainant’s competitors, and the seventh resolves to an inactive web site. These allegations are supported by competent evidence.
The information furnished to the Forum by the registrar lists the registrant of the Domain Names as “Hildegard Gruener.” This name bears no resemblance to the Domain Names. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Names within the meaning of Policy ¶ 4(c)(ii).
Complainant states that it has never licensed or authorized Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit C contains screenshots of the web sites resolving from each of the Domain Names. The sites resolving from <capitalonelocationsflorida.com> and <capitalonelocationsincalifornia.com> display advertising for Complainant and feature Complainant’s logo. They also have links or at least references to other banks, such as American Express, Bank of America, Barclay’s and others. The sites resolving from <capitalonelocationsdallas.com>, <capitalonelocationsinny.com>, <capitalonelocationsintexas.com>, and <capitalonelocationsneworleans.com> are virtually the same as the first two except that they do not display Complainant’s logo. Respondent is thus using these Domain Names to display advertisements, commercial search engines and sponsored links to third party websites, some of which are owned by Complainant’s competitors. Using a confusingly similar domain name to offer links to businesses that compete with a complainant does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). Capital One Financial Corp. v. Bridge Port / Bridge Port Enterprises, FA1650470 (Forum Jan. 7, 2016) (finding that Respondent’s use of “…the <capitalon.com> domain name to display links to competing financial institutions…does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii).”), Capital One Financial Corp. v. CW Inc., FA 1527001 (Forum Nov. 25, 2013) (finding that Respondent’s use of the domain name to provide “links to other financial institutions, some of which may compete with Complainant” is neither a “bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”).
The screenshot of the web site resolving from <capitalonelocationsnearme.com> displays the message “This site can’t be reached.” No other substantive content appears. Failure to make an active use of a domain name has often been held to be evidence of a lack of rights or legitimate interests in that name. TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) 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 which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) 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;
(iii) 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 web site 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 respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Names discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the <capitalonelocationsflorida.com>, <capitalonelocationsincalifornia.com>, <capitalonelocationsdallas.com>, <capitalonelocationsinny.com>, <capitalonelocationsintexas.com>, and <capitalonelocationsneworleans.com> Domain Names to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites, as described in Policy ¶ 4(b)(iv). Respondent is obtaining commercial gain from its use of the Domain Names and the resolving web sites. When a visitor to these sites clicks on a link to one of the other sites listed there, Respondent receives compensation from the various web site owners who are accessed from Respondent’s sites. Most likely, Respondent receives compensation based upon the number of visits the web site owners get from being linked to Respondent’s web sites. AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Names is commercial also because the various companies forwarded from Respondent’s web sites benefit from the subsequent interest and custom of those who visit the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Second, Respondent is using the <capitalonelocationsflorida.com>, <capitalonelocationsincalifornia.com>, <capitalonelocationsdallas.com>, <capitalonelocationsinny.com>, <capitalonelocationsintexas.com>, and <capitalonelocationsneworleans.com> Domain Names to pass off as Complainant and provide unverified information about Complainant. As discussed above, the web sites resolving from the first two Domain Names contain Complainant’s logo and the remaining four do not. Nevertheless, all six purport to offer links furnishing Complainant’s locations in their respective geographic areas and all six list numerous banking and finance products and services furnished by Complainant, such as credit cards, auto loans, personal banking, mortgages and home equity loans and the like. All six display a detailed narrative description of Complainant and its standing in the financial services industry. All six sites are all designed and intended to lead a visitor to believe that they are sponsored or endorsed by Complainant and this is understandably disruptive to Complainant’s business. Using a confusingly similar domain name to direct internet users to a webpage designed to mimic a complainant’s webpage is disruptive to the complainant’s business, especially where, as here, those web sites contain links to competing businesses. Respondent’s conduct thus fits within the circumstances articulated by Policy ¶ 4(b)(iii) and is evidence of bad faith registration and use. Capital One Financial Corp. v. Michael Bock, FA1718603 (Forum Mar. 28, 2017) (finding bad faith registration because “…the disputed domain name and resolving website were designed to pass off as a product of Complainant for the purpose of business competition.”), Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA1620197 (Forum June 16, 2015) (concluding that “…Respondent’s use of the disputed domain name disrupts Complainant’s business. Respondent provides misleading information about Complainant through the disputed domain name and offers ‘an exclusive reward worth at least $50.00,’ resulting in confusion and disruption. Respondent’s attempts to pass itself off as Complainant to disrupt Complainant’s business…constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”).
Third, as discussed above, the <capitalonelocationsnearme.com> Domain Name resolves to an inactive web site. While this “use” does not fit neatly within any of the examples of bad faith listed in Policy ¶ 4(b), that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passive holding of a confusingly similar domain name has often been held to demonstrate bad faith under 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).”), Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)).
Complainant argues that Respondent’s registration and use of these Domain Names should be found to be in bad faith because of the fame of Complainant’s mark, that registering and using a domain name that contains a famous mark belonging to another person is in and of itself bad faith for the purposes of the Policy. Complainant offered no support for this argument, however; the authority it did cite supported the argument that registering an infringing domain name with prior knowledge of a complainant’s rights in its mark constitutes bad faith. The Panel concurs with this precedent, if not the theory advanced by Complainant. Complainant and its CAPITAL ONE mark are well-known and famous throughout the United States at a minimum. Capital One Financial Corp. v. Capital One Consulting, FA1819367 (Forum Jan. 14, 2019) (concluding that “Complainant submitted evidence in support of its allegation that its rights in the CAPITAL ONE trademark are extensive and well established, particularly with reference to the earlier decisions of this Tribunal that has found the CAPITAL ONE mark to be famous.”). It is evident from this fame and notoriety, from the close similarity between Complainant’s mark and Respondent’s Domain Names, and from Respondent’s passing off as Complainant that Respondent had actual knowledge of Complainant’s mark when it registered the Domain Names in June 2015. See WHOIS report, Complaint Exhibit B for registration date. Recognizing the nonexclusive nature of Policy ¶ 4(b), UDRP panels have often held that actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonelocationsdallas.com>, <capitalonelocationsflorida.com>,<capitalonelocationsincalifornia.com>, <capitalonelocationsinny.com>,<capitalonelocationsintexas.com>, <capitalonelocationsnearme.com>, and <capitalonelocationsneworleans.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
June 17, 2019
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