Capital One Financial Corporation v. Domain Admin a/k/a Taranga Services Pty Ltd
Claim Number: FA0909001285637
Complainant is Capital One Financial Corporation (“Complainant”), represented by Douglas
A. Rettew, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <capitalonecreditcards.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.
Louis E. Condon 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, Moniker, Inc. confirmed by e-mail to the National Arbitration Forum that the <capitalonecreditcards.com> domain name is registered with Moniker, Inc. and that Respondent is the current registrant of the name. Moniker, Inc. has verified that Respondent is bound by the Moniker, 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 September 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 15, 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@capitalonecreditcards.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 21, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <capitalonecreditcards.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or legitimate interests in the <capitalonecreditcards.com> domain name.
3. Respondent registered and used the <capitalonecreditcards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Capital One
Financial Corporation, is a diversified financial services company which
markets its services, including credit card services, under the CAPITAL ONE
mark. Complainant registered the CAPITAL
ONE mark with the United States Patent and Trademark Office (“USPTO”) on May
27, 1997 (Reg. No. 2,065,992).
Complainant is a Fortune 500 company with over 745 physical locations
around the
Respondent, Domain Admin a/k/a Taranga Services Pty Ltd, registered the <capitalonecreditcards.com> domain name on or after August 21, 2004. The disputed domain name does not currently resolve to an active website.
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.
The Panel finds that Complainant has established rights in
the CAPITAL ONE mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO (Reg. No. 2,065,992
issued May 27, 1997). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Expedia, Inc.
v. Tan, FA 991075 (Nat. Arb. Forum
June 29, 2007) (“As the [complainant’s] mark is registered with the
USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which the respondent operates; therefore it is sufficient that
the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that
Respondent’s <capitalonecreditcards.com> domain name is confusingly similar to its CAPITAL ONE
mark. The <capitalonecreditcards.com> domain name differs from Complainant’s mark in three ways:
(1) the space has been removed from the mark; (2) the descriptive term “credit
cards” has been added to the mark; and (3) the generic top-level domain
(“gTLD”) “.com” has been added. The Panel
finds that neither the removal of a space, nor the addition of a term that
describes a mark holder’s business, as does “credit cards” in this case,
sufficiently distinguish a domain name from a mark that it incorporates for the
purposes of Policy ¶ 4(a)(i). The Panel
also finds that the addition of a gTLD does not reduce the likelihood of
confusion between the domain name and the mark, because every domain name must
contain a top-level domain. Therefore,
the Panel finds that these changes do not minimize or eliminate the resulting
likelihood of confusion, and so the <capitalonecreditcards.com>
domain name is confusingly similar to
Complainant’s CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <capitalonecreditcards.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has failed to respond to these proceedings. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known
by the <capitalonecreditcards.com> domain name nor has it ever
been the owner or licensee of the CAPITAL ONE
mark. Respondent has been identified as
“Domain Admin a/k/a Taranga Services Pty Ltd,”
and nothing in the WHOIS record for the disputed domain name lists Respondent
as any variant on the CAPITAL ONE mark.
Respondent also has failed to show any evidence contrary to
Complainant’s contentions. The Panel
therefore finds that Respondent is not commonly known by the <capitalonecreditcards.com>
domain name pursuant to
Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark).
Respondent is not making an active use of the <capitalonecreditcards.com> domain name. Previous panels have found that a failure to make active use of a disputed domain name can fail to be either 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). Consequently, under these circumstances this Panel finds that Respondent’s use of the <capitalonecreditcards.com> domain name 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). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that the list of factors within Policy ¶ 4(b) are not exhaustive of the potential factors which may show evidence of a respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant contends that Respondent has failed to make active use of the <capitalonecreditcards.com> domain name (registered August 21, 2004), and that this failure to make active use of the disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). The Panel agrees, and finds that Respondent’s failure to make active use of the disputed domain name is evidence of Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <capitalonecreditcards.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 2, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum