Capital One Financial Corp v. Ray Ceo Jr.
Claim Number: FA1909001862518
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Ray Ceo Jr. (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital1creditcard.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2019; the Forum received payment on September 17, 2019.
On September 18, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capital1creditcard.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 September 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 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@capital1creditcard.com. Also on September 18, 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.
A timely Response was received and determined to be complete on October 8, 2019.
On October 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
A timely Additional Submission was received from Complainant and determined to be complete on October 10, 2019.
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
1. Respondent’s <capital1creditcard.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or legitimate interests in the <capital1creditcard.com> domain name.
3. Respondent registered and uses the <capital1creditcard.com> domain name in bad faith.
B. Respondent
A small claims action is being or has been initiated against Complainant and this UDRP proceeding should be dismissed.
C. Complainant’s Additional Submission
The Panel has discretion under Rule 18 to determine if an administrative UDRP proceeding should continue in the case of a concurrent legal action.
Complainant operates in the financial services industry, and holds a registration for the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,065,992 registered May 27, 1997).
Respondent registered the <capital1creditcard.com> domain name on August 24, 2019, and uses it to resolves to a parked website and to attempt to sell the domain name to Complainant for $25,000.00.
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.
Preliminary Matter: Concurrent Legal Proceeding
Respondent claims to have initiated a small claim against Complainant concerning the disputed domain name. In the event of a concurrent legal proceeding, the Panel has discretion under Rule 18 as to whether or not to continue with a UDRP proceeding. Complainant argues that a small claims court does not typically adjudicate intellectual property matters, and only awards monetary damages. Complainant also argues that Respondent is simply trying to delay the transfer of the disputed domain name, which was clearly registered in bad faith. The Panel agrees with Complainant, as further discussed below. The Panel finds that this is a classic cybersquatting case, exactly suited to this forum, and justice will not be served in any way by dismissing this case or delaying the transfer of the disputed domain name. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Forum August 13, 2007) where the Panel denied a request to suspend or terminate a UDRP proceeding because respondent likely filed in small claims court. This UDRP case will go forward.
The Panel finds that Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i) based upon registration with the USPTO. 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).”).
Respondent’s <capital1creditcard.com> incorporates the CAPITAL ONE mark, changing “one” to “1”, and adding the descriptive terms “credit” and “card” and the “.com” gTLD. These changes do not distinguish the domain name from Complainant’s mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (finding the <pandora1.com> domain name to be confusingly similar to Complainant’s PANDORA ONE mark due to the similarity between the word ONE and the numeral 1 in meaning and sound.). Therefore, the Panel finds that Respondent’s <capital1creditcard.com> domain name is confusingly similar to the Complainant’s CAPITAL ONE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show 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 <capital1creditcard.com> domain name, as Respondent is commonly known by the disputed domain name. Respondent is not authorized by Complainant to use the CAPITAL ONE mark. The WHOIS information for the disputed domain name shows Respondent as “Ray Ceo Jr.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus lacks rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also 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.”).
Complainant also argues that 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. Complainant provides evidence that the disputed domain name previously resolved to a parked webpage. The use of a disputed domain name to resolve to a parked website is not 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). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Respondent has failed to make any active use of the <mellosolar.com> domain name since it was registered, with the exception that the domain name is employed by Respondent to solicit offers to purchase it. Such substantively inactive use is, in the circumstances described in the Complainant, neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it 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.”). Complainant also provides evidence that Respondent attempted to sell the disputed domain name to Complainant for $25,000.00, which is also not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name); see also State Farm Mutual Automobile Insurance Company v. shilei, FA1623634 (Forum July 14, 2015) (finding that “…Respondent lacks rights and legitimate interests in the <statefarmdrivesafeandsave.com> domain name under Policy ¶ 4(a)(ii)” because “Respondent has offered the domain for sale to Complainant.”). Accordingly, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services, and thus has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant shows that Respondent offered to sell the disputed domain name for $25,000, and attempted to coerce Complainant to purchase the disputed domain name by hosting content critical of Complainant, and threatening legal action. The use of a disputed domain name to solicit offers to purchase, combined with threats of commercial damage, evince bad faith under Policy ¶ 4(b)(i). See Leland Turner v. joseph derer, FA 1618086 (Forum June 25, 2015) (finding bad faith per Policy ¶ 4(b)(i) where “the Respondent requested $24,995 for the Domain Name and threatened commercial damage if payment was not made.”). The Panel thus finds that Respondent registered and uses the <capital1creditcard.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent fails to make an active use of the <capital1creditcard.com> domain name. The Panel agrees and finds that this is further evidence of bad faith in these circumstances. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
Complainant asserts that Respondent had knowledge of Complainant’s rights in the CAPITAL ONE mark due to Complainant’s extensive use of the mark before Respondent registered the <capital1creditcard.com> domain name. The Panel agrees, noting Respondent’s targeting of Complainant, and finds that Respondent had actual notice of Complainant’s rights in the CAPITAL ONE mark, demonstrating bad faith under Policy ¶ 4(a)(iii). See 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”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capital1creditcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 11, 2019
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