national arbitration forum

 

DECISION

 

Capital One Financial Corporation v. Michael Nakhleh

Claim Number: FA0808001220212

 

PARTIES

Complainant is Capital One Financial Corporation (“Complainant”), represented by Douglas A. Rettew, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., Washington D.C., USA.  Respondent is Michael Nakhleh (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <capitalone.mobi>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 14, 2008.

 

On August 13, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <capitalone.mobi> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On August 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 2008
by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@capitalone.mobi by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <capitalone.mobi> domain name is identical to Complainant’s CAPITAL ONE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <capitalone.mobi> domain name.

 

3.      Respondent registered and used the <capitalone.mobi> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Capital One Financial Corporation, is one of the nation’s leading and best known financial institutions that offer a broad range of services to consumers, small businesses, and commercial clients.  Complainant has branded its services using the CAPITAL ONE mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) many times, including Registration Number 1,992,626 issued August 13, 1996.  Complainant also registered and uses the <capitalone.com> domain name to promote its services online.

 

Respondent, Michael Nakhleh, registered the <capitalone.mobi> domain name on September 26, 2006.  The disputed domain name resolves to a parked page advertising GoDaddy’s domain name registration services.  Respondent has also indicated to the general public that the disputed domain name is for sale, and is asking for $50,000. 

 

In its Complaint, Complainant notes a previous UDRP case, American Airlines, Inc. v. Nakhleh, FA 1063459 (Nat. Arb. Forum Oct. 2, 2007) in which Respondent was ordered to transfer the infringing <americanairlines.mobi> domain name to the complainant in that case, American Airlines.

 

DISCUSSION

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the CAPITAL ONE mark through its longstanding use of the mark in commerce, as well as by referencing its corresponding USPTO trademark registrations.  The Panel finds this evidence sufficient to confer rights in the CAPITAL ONE mark to Complainant pursuant to Policy ¶ 4(a)(i).  See Google, Inc. v. Mosspot, FA 547780 (Nat. Arb. Forum Nov. 3, 2005) (“Based on the uncontroverted evidence submitted by Complainant, the Panel finds that Complainant has rights in the GOOGLE mark that arise from both the use in commerce and the registration of the mark with the United States Patent and Trademark Office (‘USPTO’).”); see also Seiko Epson Corp. & Epson Am., Inc. v. AOS Web Com, Inc., FA 823033 (Nat. Arb. Forum Nov. 27, 2006) (“Seiko Epson has long established rights in the distinctive mark EPSON through use and through numerous United States and other trademark and service mark registrations.”).

 

Respondent’s <capitalone.mobi> domain name contains Complainant’s CAPITAL ONE mark in its entirety.  The “.mobi” at the end is the only difference between the two, and “.mobi” is considered a top-level domain that is required of all domain names.  Consequently, this addition is irrelevant under a Policy ¶ 4(a)(i) analysis.  Therefore, the Panel finds that Respondent’s <capitalone.mobi> domain name is identical to Complainant’s CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).  See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”); see also Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”).

 

The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <capitalone.mobi> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii).  Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant alleges that Respondent “is not and has not been commonly known by the Domain Name.”  Complainant cites the previously mentioned case of American Airlines, Inc. v. Nakhleh, FA 1063459 (Nat. Arb. Forum Oct. 2, 2007), where the panel noted: “A review of Respondent’s WHOIS registration information reveals that the registrant of the <americanairlines.mobi> domain name is “Michael Nakhleh.”   The Panel finds, in the absence of proffered evidence from Respondent, that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”  The Panel finds the same circumstances to be true in this case based upon the same WHOIS information, and the absence of any other information in the record to the contrary.  Therefore, the Panel concludes that Respondent is not commonly known by the <capitalone.mobi> domain name pursuant to Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Respondent’s <capitalone.mobi> domain name redirects Internet users to a page parked by the registrar, GoDaddy.com, Inc., which advertises the registrar’s services.  This use is unrelated to Complainant’s business, and constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).

 

It is also documented in GoDaddy’s “Domain Name Aftermarket” that Respondent is offering the <capitalone.mobi> domain name for sale to the general public, and is asking for $50,000.  This amount is likely well in-excess of Respondent’s out-of-pocket costs, and further evidences Respondent’s lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that the respondent had no rights or legitimate interests in the contested domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

Based on this analysis, the Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Bad faith registration and use can be shown by evidencing one of four scenarios outlined in Policy ¶ 4(b).  While these scenarios are not exhaustive, the Panel finds that Respondent’s registration and use of the <capitalone.mobi> domain name is consistent with three of the factors identified in Policy ¶ 4(b), as will be explained in greater detail below.

 

First, Respondent is offering the <capitalone.mobi> domain name for sale to the general public for $50,000.  This amount is well in-excess of Respondent’s out-of-pocket costs.  Furthermore, the disputed domain name is merely parked with the registrar, and Respondent has not demonstrated any intent to register the disputed domain name other than to merely offer it for sale.  These circumstances indicate bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

 

As mentioned above, Complainant cites a previous UDRP case in which the panel ordered Respondent to transfer the infringing domain name to the complainant in that case.  See American Airlines, Inc. v. Nakhleh, FA 1063459 (Nat. Arb. Forum Oct. 2, 2007) (ordering transfer of the <americanairlines.mobi> domain name).  The Panel notes the fact that the domain name in that case also included a well-known mark in its entirety, AMERICAN AIRLINES, and merely added the top-level domain “.mobi” as is the case here.  This demonstrates a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004)(“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)].  The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).

 

Finally, Respondent’s <capitalone.mobi> domain name redirects Internet users to a parked page advertising the registrar’s domain name registration services.  While this use is unrelated to Complainant’s business, consumers may believe that Complainant is sponsoring or endorsing the registrar’s services, especially since Complainant sponsors many other businesses and events seemingly unrelated to its business for marketing purposes.  Respondent is using Complainant’s CAPITAL ONE mark in its entirety in the disputed domain name, and has thus created this likelihood of confusion.  Respondent’s offer to sell the <capitalone.mobi> domain name also indicates Respondent’s intention to profit from this venture.  This evidence is sufficient for the Panel to conclude that Respondent’s registration and use of the <capitalone.mobi> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See GMAC LLC v. WhoisGuard Protected, FA 942715 (Nat. Arb. Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

 

Since Respondent’s registration and use has been shown to violate Policy ¶ 4(b), the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <capitalone.mobi> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  September 25, 2008

 

 

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