Capital One Financial Corporation v. Ali Aziz
Claim Number: FA0909001285597
Complainant is Capital
One Financial Corporation (“Complainant”), represented by Douglas A. Rettew, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <capitalonemastercard.com> and <capitialone.com>, registered with Dotregistrar 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 23, 2009.
On September 22, 2009, Dotregistrar LLC confirmed by e-mail to the National Arbitration Forum that the <capitalonemastercard.com> and <capitialone.com> domain names are registered with Dotregistrar LLC and that Respondent is the current registrant of the names. Dotregistrar LLC has verified that Respondent is bound by the Dotregistrar LLC 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 September 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 14, 2009 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@capitalonemastercard.com and postmaster@capitialone.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a world-wide leader in financial services.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CAPITAL ONE mark (including Reg. No. 1,992,626, issued August 13, 1996).
Respondent registered the <capitialone.com> domain name on February 22, 2002, and the <capitalonemastercard.com>
domain name on December 23, 2001.
Respondent is neither commonly known by nor licensed by
complainant to register the disputed
domain names.
Respondent’s domain
names resolve to websites displaying third-party links to websites offering
financial services in competition with the business of Complainant.
Respondent has a history of registering domain names infringing upon the trademark rights of others, and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants.
Respondent’s <capitalonemastercard.com> and <capitialone.com> domain names are confusingly similar to Complainant’s CAPITAL ONE mark.
Respondent does not have any rights or legitimate interests in the domain names <capitalonemastercard.com> and <capitialone.com>.
Respondent registered and uses the domain names <capitalonemastercard.com> and <capitialone.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) Both domain names were registered and are being used by Respondent 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has sufficiently established rights in the
CAPITAL ONE mark under Policy ¶ 4(a)(i) through its
registration of the mark with the USPTO.
Complainant argues that Respondent’s domain names are confusingly similar to the CAPITAL ONE mark under Policy ¶ 4(a)(i). Respondent’s <capitialone.com> domain name contains a misspelled version of Complainant’s mark. A domain name that consists merely of a misspelled version of a complainant’s registered mark creates confusing similarity between the domain name and the mark. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to a complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to a complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
Respondent’s <capitalonemastercard.com> domain name contains Complainant’s mark in its entirety and adds the third-party mark “mastercard.” The addition to Complainant’s mark of a third-party mark for an enterprise that operates in the same financial services market as does Complainant, creates a confusing similarity between the disputed domain name and the registered mark. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding a domain name to be confusingly similar to a competing mark where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of industry-specific words, namely, the marks of a complainant’s competitors); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described a complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish a respondent’s domain name from that complainant’s mark under Policy ¶ 4(a)(i)).
Finally under this heading, both of Respondent’s domain
names contain the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant in
distinguishing a disputed domain from a registered mark. See Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
See also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003): “It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”
Therefore, the Panel finds that Respondent’s <capitalonemastercard.com> and <capitialone.com> domain
names are confusingly similar to Complainant’s CAPITAL ONE mark pursuant to
Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain names. Complainant has the initial burden of showing that Respondent lacks rights to and legitimate interests in the disputed domain names. Once Complainant makes out a prima facie case, the burden shifts to Respondent to show that it nonetheless has rights to or legitimate interests in the disputed domain names. 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.
Complainant has established a prima facie case
pursuant to Policy ¶ 4(a)(ii),
shifting the burden of proof to Respondent. Because Respondent has not
responded to the allegations of the Complaint, we are entitled to presume that
Respondent lacks rights to and legitimate interests in the disputed domain names under Policy ¶
4(a)(ii). See Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec.
22, 2004):
Respondent’s failure to respond to the Complaint functions as an
implicit admission that [Respondent] lacks rights and legitimate interests in
the disputed domain name.
It also allows the Panel to accept all reasonable allegations set forth…as
true.
However, we elect to examine the record before us by reference to the criteria set out in Policy ¶ 4(c) to determine whether there is in the record any basis for concluding that Respondent has rights to or legitimate interests in the disputed domains.
We begin by observing that Complainant contends, and
Respondent does not deny, that Respondent is neither commonly known by nor
licensed to register the disputed
domain names. Moreover, the pertinent WHOIS
information identifies Respondent only as “Ali Aziz.” On this state of the record, we are
constrained to conclude that Respondent is not commonly known by the disputed
domain names, and therefore lacks rights to and legitimate interests in the
disputed domain names within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a 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 Coppertown Drive-Thru Sys.,
LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that a respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the pertinent WHOIS
information, suggesting that that respondent was commonly known by the disputed
domain name).
We also note that there is no dispute as to Complainant’s
assertion that Respondent is using the disputed
domain names to display links to third-party websites which offer advertising in
competition with Complainant’s financial services business. We may presume from the circumstances here
presented that Respondent is using the disputed domain names to generate
click-through fees for each visit to the described links by unsuspecting
Internet users. We therefore conclude that Respondent is not employing the
disputed domains to make 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 Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is 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) because the registrant presumably receives compensation for each
misdirected Internet user); see also Coryn
Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain
names for a bona fide offering of goods or services nor a legitimate
noncommercial or fair use where that respondent used the domain names to divert
Internet users to a website that offered services competing with those offered
by a complainant under its marks).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant provides evidence that Respondent has a history of registering domain names infringing upon the trademark rights of others, and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See, for example: Travelocity.com LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009); see also American Airlines, Inc. v. Aziz, FA 1247063 (Nat. Arb. Forum Mar. 30, 2009); see also Cingular Wireless II, LLC v. Aziz, FA 892865 (Nat. Arb. Forum Mar. 7, 2007). This evidence demonstrates a pattern of registration and use of domain names containing third parties established marks which stands as evidence Respondent has registered and used the disputed domain names here in question in bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that a respondent’s behavior fell within Policy ¶ 4(b)(ii) by registering multiple domain names that infringed upon others’ famous and registered trademarks); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that a respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to show a pattern of bad faith domain registrations pursuant to Policy ¶ 4(b)(ii)).
In this connection, we also take note of the undenied
evidence that Respondent’s use of the disputed
domain names as alleged disrupts the business of Complainant by offering links
to competitors offering financial services.
This is further evidence of bad faith registration and use of the
subject domains pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
a respondent registered and used the domain name <eebay.com> in bad faith
where that respondent used the domain to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805
(Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
In addition, the evidence demonstrates that Respondent is
using the disputed domain names
to divert Internet users to websites, which display third-party links for businesses
competing with the business of Complainant.
We have already concluded that Respondent must be collecting
click-through fees from this behavior, and thus attempting to profit by
creating a likelihood of confusion between Complainant’s CAPITAL ONE mark and its
confusingly similar domain names. This
use of the disputed domain names is further evidence of their bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that a respondent engaged in bad faith
registration and use of a domain name by using a domain that was confusingly
similar to a complainant’s mark to offer links to third-party websites featuring
services similar to those offered by that complainant);
see also Univ. of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral fees.
Such use for Respondent’s own commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel thus finds that Policy ¶
4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the domain names <capitalonemastercard.com> and <capitialone.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 4, 2009
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