Capital One Financial Corporation v. DNS Admin a/k/a
Claim Number: FA0909001285636
Complainant is Capital One Financial Corporation (“Complainant”), represented by Douglas
A. Rettew, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <capitalonevisa.com>, registered with Moniker, Inc.
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
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant offers to the
public financial services, including real estate financing, home equity loans,
checking accounts, money market accounts, and credit cards.
Complainant is one of the
largest issuers of Visa and Mastercard credit cards in the
Complainant uses the CAPITAL ONE service mark in connection with its credit card and other financial services.
The United States Patent and Trademark Office (“USPTO”)
issued to Complainant a registration of the CAPITAL ONE service mark on
Respondent has no license or agreement with Complainant authorizing Respondent to use the CAPITAL ONE mark.
Respondent registered the <capitalonevisa.com>
domain name on
The disputed domain name directs Internet users to a website resolving from Respondent’s domain name which displays sponsored-link advertisements for financial-services websites competing with the business of Complainant.
Respondent’s <capitalonevisa.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
Respondent does not have any rights to or legitimate interests in the domain name <capitalonevisa.com>.
Respondent registered and uses the <capitalonevisa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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
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 established rights in the CAPITAL ONE service
mark under Policy ¶ 4(a)(i) via its registration of
the mark with the USPTO. See Expedia, Inc. v. Emmerson,
FA 873346 (Nat. Arb. Forum
Complainant’s
trademark registrations with the USPTO adequately demonstrate its rights in the
[EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).
See also UnitedHealth
Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum
The <capitalonevisa.com> domain name merely
omits the space between the two words of Complainant’s CAPITAL ONE mark and
adds the descriptive third-party mark “visa” and the generic top-level domain
(“gTLD”). The elimination of spaces in
the mark and the addition of a gTLD are irrelevant to an analysis under Policy
¶ 4(a)(i). See U.S. News & World
Report, Inc. v. Zhongqi, FA 917070
(Nat. Arb. Forum
Elimination of punctuation and the space between the
words of Complainant’s mark, as well as the addition of a gTLD does not
sufficiently distinguish the disputed domain name from the mark
pursuant to Policy ¶ 4(a)(i).
Also, because there is no
dispute that Complainant is the fourth largest Visa and Mastercard distributor
in the United States, the addition to Complainant’s mark of the third-party mark “visa”, which has an obvious
relationship to Complainant’s business, does not serve to distinguish the mark
form the disputed domain name for purposes of the Policy. See, for example, Whitney Nat’l Bank v.
Easynet Ltd, FA 944330 (Nat. Arb. Forum
The
additions of generic words with an obvious relationship to Complainant’s
business and a gTLD renders the disputed domain name confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also G.D. Searle
& Co. v.
Therefore, the Panel finds that Respondent’s <capitalonevisa.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights to or legitimate interests in the <capitalonevisa.com>
domain name. Once that is done, the burden shifts to
Respondent to show that it does indeed have rights to or legitimate interests
in the disputed domain name. See Domtar,
Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum
It
is well established that, once a complainant has made out a prima facie case in
support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Because no response was submitted in this
case, we are entitled to presume that Respondent has no rights to or legitimate
interests in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).
However, we will nonetheless
examine the record before us, in consideration of the factors listed in Policy
¶ 4(c), to determine if there is in it any basis for concluding that Respondent
has any rights or interests in the disputed domain name which are cognizable
under the Policy.
We begin by observing that there is no evidence in the
record suggesting that Respondent is commonly known by the <capitalonevisa.com>
domain name. Moreover, Complainant
asserts, and Respondent does not dany, that Respondent has no license or
agreement with Complainant authorizing Respondent to use the CAPITAL ONE mark.
And, in addition, the pertinent WHOIS information identifies Respondent only as
“DNS Admin a/k/a Nevis Domains.” Thus, we conclude that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum
We also note that Respondent does not deny the allegations
of the Complaint to the effect that Respondent’s <capitalonevisa.com>
domain name directs Internet users to the website resolving from Respondent’s domain
name, and that this resolving website displays links to third-party websites
offering financial services in competition with the business of Complainant. Such a use of the contested domain is not a
use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the disputed domain name pursuant
to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We
have already concluded that Respondent is using the disputed domain name
to direct Internet users to Respondent’s website, which contains links to
third-party websites offering credit card services in competition with
Complainant’s services offered under its CAPITAL ONE mark. Respondent is thus using the <capitalonevisa.com>
domain name to disrupt Complainant’s business.
This is evidence of bad faith registration and use of the contested
domain pursuant to Policy ¶ 4(b)(iii). See Puckett,
Individually v. Miller, D2000-0297 (WIPO
Additionally, we may infer from the circumstances presented
that Respondent receives pay-per-click fees for hosting these links alleged in
the Complaint. Given the confusingly
similar nature of the disputed domain name vis-à-vis the competing mark, Internet
users are likely to be confused as to Complainant’s possible affiliation with or
sponsorship of the disputed domain name and the resolving website. This is evidence of bad faith registration
and use of the domain pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum
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.
See also, for example,
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).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <capitalonevisa.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 22, 2009
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