Capital One Financial Corp. v. Paydayloanz.com
Claim Number: FA1209001463493
Complainant is Capital One Financial Corp. (“Complainant”), represented by Elizabeth Lim Brooks, Virginia, USA. Respondent is Paydayloanz.com (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonepayday.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2012; the National Arbitration Forum received payment on September 20, 2012.
On September 21, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <capitalonepayday.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 September 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@capitalonepayday.com. Also on September 21, 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 October 19, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions.
1. Complainant is a financial institution founded in 1988 and offers financial products and services to small business and commercial clients.
2. Complainant owns numerous trademark registrations for its CAPITAL ONE mark worldwide, including with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,442,400 registered June 3, 2008). See Exhibit A, Attachment 1. Complainant also owns trademark registrations with other global agencies, such as Brazil’s National Institute of Industrial Property Ministry of Development, Industry, and Foreign Trade (“INPI”) (Reg. No. 821,183,613 registered September 2, 2003), the Canadian Intellectual Property Office (“CIPO”) (Reg. No. 469123 registered January 21, 1997), and the Swedish Patent and Registration Office (“SPRO”) (Reg. No. 377,455 registered December 23, 2005). See Exhibit A, Attachment 2.
3. Complainant uses the CAPITAL ONE trademark to promote its goods and services.
4. Respondent registered the <capitalonepayday.com> domain name, which resolves to a webpage featuring advertisements, a commercial search engine, and hyperlinks to other businesses, some of which compete with Complainant.
5. The <capitalonepayday.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
6. Respondent has no rights or legitimate interests in respect of the domain name
7. Respondent is not commonly known by the <capitalonepayday.com> domain name and has never been granted authorization to use the mark in a domain name or otherwise. Respondent does not possess rights or legitimate interests in the disputed domain name, as demonstrated by its failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
8. Respondent registered and uses the <capitalonepayday.com> domain name in bad faith, by featuring sponsored links to competing third party websites.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent submitted an email communication to the Forum on September 24, 2012 in the following terms:
“I
get
emails and documents
information regarding trademarks.
And I'm not complacent. I have bought by Domain
CapitalOnePayday.com.
By that I do not know
what is the name associated with
the trademark. But After I know that
the domain CapitalOnePayday.com
have been
associated with the trademark. Which, through a long period of restraint. And before I get emails
from you. I
do not have any use
for that
domain. After I know
that the domain
CapitalOnePayday.com. Associated with the trademark. I confirm
that I innocently.
I have no intention
of infringement of
the trademark. I've registered
that domain through Godaddy.com and I connect
to Support Teams for remove the domain
CapitalOnePayday.com out of my account. And you can
be sure that I did not do anything. About
the domain CapitalOnePayday.com until to date.
And You can contact Godaddy.com and you can contact
me to determine if there is a request to delete
domain CapitalOnePayday.com real or not?
And if there is anything
else that I can do this. I am pleased to
be able to practice as much as
possible.
Thank You ....”
1. Complainant is a United States company that is a well-known financial institution founded in 1988 and which offers financial products and services to small business and commercial clients.
2. Complainant owns numerous trademark registrations for its CAPITAL ONE mark worldwide, including with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,442,400 registered June 3, 2008).
3. Respondent registered the <capitalonepayday.com> domain name on June 24, 2012. The domain name resolves to a webpage featuring advertisements, a commercial search engine and hyperlinks to other businesses, some of which compete 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."
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims to own rights in its CAPITAL ONE mark through its numerous international trademark registrations with agencies that include the USPTO (e.g. Reg. No. 3,442,400 registered June 3, 2008), INPI (Reg. No. 821,183,613 registered September 2, 2003), CIPO (Reg. No. 469123 registered January 21, 1997), and SPRO (Reg. No. 377,455 registered December 23, 2005). The panel in Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), stated that the complainant’s rights in its HONEYWELL mark were well-established through its many trademark registrations throughout the world. The Panel concludes that Complainant secured rights in its CAPITAL ONE mark through its various global trademark registrations, pursuant to Policy ¶ 4(a) (i). The Panel also determines that Policy ¶ 4(a) (i) does not require Complainant to register its mark in the country of Respondent’s residence. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CAPITAL ONE mark. Complainant contends that the <capitalonepayday.com> domain name is confusingly similar to its CAPITAL ONE mark, citing the addition of the generic term “payday” and the generic top-level domain (“gTLD”) “.com” to the entirety of the mark. The Panel also observes that the <capitalonepayday.com> domain name does not include the space between the words of the mark. The Panel finds that removing a space, and adding generic terms and a gTLD to a mark does not alter the <capitalonepayday.com> domain name’s confusing similarity to Complainant’s mark under Policy ¶ 4(a)(i). See 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.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CAPITAL ONE trademark and to use it in its domain name, adding the generic expression “payday” , indicating that the domain name relates to pay day loan activities of Complainant and the financial services relating to them, which emphasizes the confusing similarity between the domain name and the trademark;
(b) Respondent has then caused the disputed domain name to resolve to a website displaying advertisements and links to Complainant’s competitors;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant also argues that Respondent is not commonly known by the
<capitalonepayday.com> domain name, due to the WHOIS information, which identifies “Paydayloanz.com” as the registrant. See Exhibit B. Complainant also contends that Respondent is not authorized to use the CAPITAL ONE mark in a domain name and is not a licensee of Complainant’s business. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that the respondent was not commonly known by the disputed domain name, and no evidence was present, including in the WHOIS information, to support such a finding. The Panel finds that Respondent is not commonly known by the <capitalonepayday.com> domain name based on the WHOIS information, and therefore find that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c) (ii);
(e) Complainant also submits that Respondent further demonstrates lack of rights
or legitimate interests by its use of the <capitalonepayday.com> domain
name, which is used to display advertising and third-party commercial links to other businesses, some of which are owned by Complainant’s competitors. Complainant argues that such use is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel determines that by maintaining a website that features hyperlinks to websites owned by Complainant’s competitors, Respondent does not 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. Respondent has not filed a Response that seeks to rebut the prima facie case against it. Respondent has, however, submitted an email communication to the Forum that is set out above. The Panel has given consideration to the contents of that communication and finds that it does not contain any factual or other matters showing that Respondent a right or legitimate interest in the disputed domain name. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent registered and uses the <capitalonepayday.com> domain name in bad faith, due to its use of a parked webpage displaying advertising and competing hyperlinks at the resolving webpage. Complainant argues that such use causes confusion to consumers and that Respondent benefits from the reputation associated with Complainant’s CAPITAL ONE mark. The Panel infers that Respondent makes a profit in the form of referral fees from the hyperlinked websites and determines that Respondent’s registration and use of the <capitalonepayday.com> domain name was in bad faith under Policy ¶ 4(b) (iv) because Respondent attracts Internet traffic to its website by using a confusingly similar domain name to Complainant’s mark, and making a financial gain as a result. 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).
Secondly, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CAPITAL ONE mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonepayday.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 22, 2012
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