Capital One Financial Corp. v. c/o CAPITLONEBANK.COM
Claim Number: FA1207001453542
Complainant is Capital One Financial Corp. (“Complainant”), represented by Elizabeth Lim Brooks, Virginia, USA. Respondent is c/o CAPITLONEBANK.COM (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitlonebank.com>, registered with Domain.com, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2012; the National Arbitration Forum received payment on July 16, 2012.
On July 16, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <capitlonebank.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@capitlonebank.com. Also on July 17, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2012, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
1) Complainant registered the CAPITAL ONE BANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,419,972 filed May 17, 2005 registered April 29, 2008);
2) Complainant also registered derivations of the CAPITAL ONE BANK mark with trademark authorities throughout the world including Canada, Mexico, Brazil, Austria, India, Monaco, and Chile;
3) Respondent’s <capitlonebank.com> domain name is confusingly similar Complainant’s CAPITAL ONE BANK mark;
4) Respondent is not commonly known by the disputed domain name;
5) Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name;
6) Respondent resolves the disputed domain name to a website offering links to financial institutions that compete directly with Complainant;
7) Respondent’s use of the disputed domain name disrupts Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its CAPITAL ONE BANK mark.
2. Respondent’s <capitlonebank.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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."
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.
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.”).
Complainant asserts that it established its rights in the CAPITAL ONE BANK mark by registering it with the USPTO (Reg. No. 3,419,972 filed May 17, 2005 registered April 29, 2008) and other trademark authorities. The Panel notes that the international registrations provided by Complainant were for derivations of the CAPITAL ONE BANK mark and not the mark itself. Nonetheless, the Panel concludes that Complainant established its rights in the CAPITAL ONE BANK mark under Policy ¶ 4(a)(i) based upon the USPTO registration dating back to the filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant asserts that Respondent’s <capitlonebank.com> domain name is confusingly similar Complainant’s CAPITAL ONE BANK mark. The Panel notes that the disputed domain name includes nearly the entire mark, while removing the spaces between the terms of the mark and the letter “a,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s CAPITAL ONE BANK mark under Policy ¶ 4(a)(i) See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by the disputed domain name. The Panel notes that Respondent failed to provide any evidence to support a finding contrary to Complainant’s claims. The Panel also notes that the WHOIS information identifies the registrant of the disputed domain name as “c/o CAPITLONEBANK.COM.” Even though the Panel may find that the WHOIS information is similar to the disputed domain name, the Panel still concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the lack of other evidence. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant also claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that Respondent resolves the disputed domain name to a website offering links to financial institutions that compete directly with Complainant, like Bank of America and ING. Complainant submits a printout of the resolving website, which the Panel notes depicts a website offering links to financial services companies. See Complainant’s Exhibit D. Thus, the Panel concludes that Respondent is not making 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant contends that Respondent’s use of the disputed domain name disrupts Complainant’s business. Complainant states that Respondent resolves the disputed domain name to a website offering links to financial institutions that compete directly with Complainant, like Citibank and Middleburg Bank. Internet users seeking out Complainant’s online services may accidentally arrive at Respondent’s website and then use one of the links offered. Based upon this fact, the Panel finds that Respondent’s disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii), demonstrating bad faith registration and use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitlonebank.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 22, 2012
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