Capital One Financial Corporation v. Privacy LLC
Claim Number: FA0912001297330
Complainant is Capital One Financial Corporation (“Complainant”), represented by Douglas
A Rettew, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P.,
REGISTRAR
The domain names at issue are <capitaolone.com>, <captiolonebank.com>, and <captialonecard.com>, registered with Joker.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 31, 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@capitaolone.com, postmaster@captiolonebank.com, and postmaster@captialonecard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
1. Respondent’s <capitaolone.com>, <captiolonebank.com>, and <captialonecard.com> domain names are confusingly similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or legitimate interests in the <capitaolone.com>, <captiolonebank.com>, and <captialonecard.com> domain names.
3. Respondent registered and used the <capitaolone.com>, <captiolonebank.com>, and <captialonecard.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Capital One Financial Corporation, is a world-wide leader in financial services. Complainant owns a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CAPITAL ONE mark (Reg. No. 1,992,626 issued August 13, 1996).
Respondent registered the <capitaolone.com>, <captiolonebank.com>, and <captialonecard.com> domain names on or after November 15, 2005. Respondent’s disputed domain names resolve to websites displaying third-party links to websites which offer services in competition with Complainant.
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 sufficiently
established rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i)
through its registration of the mark with the USPTO (Reg. No. 1,992,626 issued
August 13, 1996).
Complainant argues that Respondent’s disputed domain names
are confusingly similar to Complainant’s CAPITAL
Respondent’s <captiolonebank.com> and <captialonecard.com> domain names contain add the terms “bank” and “card.” The Panel finds that generic terms, especially generic terms with an obvious relationship to a complainant’s business operation, that are added to a complainant’s registered mark, create a confusing similarity between the disputed domain name and the mark. See 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 the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
Lastly, Respondent’s disputed domain names contain the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that the addition of a gTLD is irrelevant in
distinguishing a disputed domain from a registered mark. See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and
legitimate interests in the disputed domain names. If
Complainant makes a prima facie case
in support of its allegations, the burden shifts to Respondent to prove that
its rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has
established a prima facie case and
Respondent has failed to submit a Response in this proceeding. See Intel
Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding
the “complainant must first make a prima facie case that [the]
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show
it does have rights or legitimate interests.”); see also 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). Nevertheless, the Panel will
examine the record to determine if Respondent has rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by and has never been licensed to register the disputed domain names. The Panel finds the registrant’s WHOIS information demonstrates that Respondent is not commonly known by the disputed domain names. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s domain names resolve to websites featuring
advertisements and links relating to Complainant’s competitors in the financial
services industry. The Panel infers that Respondent profits through the
generation of click-through fees from the links to Complainant’s
competitors. Therefore, the Panel finds that Respondent’s use of the
disputed domain names is not in connection with a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the disputed domain name under Policy ¶
4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality
Domains For
Complainant contends that Respondent has engaged in the
practice of typosquatting. Respondent is
taking advantage of Internet users that are attempting to reach Complainant,
but mistakenly misspelling Complainant’s CAPITAL ONE mark. The Panel finds that Respondent’s engagement
in the practice of typosquatting is further evidence that Respondent lacks
rights and legitimate interests in the <capitaolone.com> domain names under
Policy ¶ 4(a)(ii).
See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also Microsoft Corp. v. Domain Registration
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain names to divert Internet customers seeking Complainant’s website to the competitive
websites that resolve from the disputed domain names, through the confusion
caused by the similarity between the CAPITAL ONE mark and the disputed domain
names. The Panel finds that Respondent’s
use of the disputed
domain names disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel infers that Respondent receives click-through fees from the use of the aforementioned competing hyperlinks. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and the resolving websites. Therefore, the Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also University 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 finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaolone.com>, <captiolonebank.com>, and <captialonecard.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 20, 2010
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