Capital One Financial Corp. v. William / William Boggs
Claim Number: FA1301001482996
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is William / William Boggs (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capialone360.com>, <capiitalone360.com>, <capitaalone360.com>, <capitallone360.com>, <capitalne360.com>, <capitaloe360.com>, <capitalon360.com>, <capitalone30.com>, <capitalone350.com>, <capitalone36.com>, <capitalone369.com>, <capitalone460.com>, <capitalone60.com>, <capitalonr360.com>, <capitaone360.com>, <capitlone360.com>, <capittalone360.com>, <360sid.com>, <360sie.com>, <36side.com>, <cappitalone360.com>, <captalone360.com>, and <cpaitalone360.com>, registered with Register.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2013; the National Arbitration Forum received payment on January 31, 2013.
On January 31, 2013, Register.com confirmed by e-mail to the National Arbitration Forum that the <capialone360.com>, <capiitalone360.com>, <capitaalone360.com>, <capitallone360.com>, <capitalne360.com>, <capitaloe360.com>, <capitalon360.com>, <capitalone30.com>, <capitalone350.com>, <capitalone36.com>, <capitalone369.com>, <capitalone460.com>, <capitalone60.com>, <capitalonr360.com>, <capitaone360.com>, <capitlone360.com>, <capittalone360.com>, <360sid.com>, <360sie.com>, <36side.com>, <cappitalone360.com>, <captalone360.com>, and <cpaitalone360.com> domain names are registered with Register.com and that Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.com 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 February 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2013 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@capialone360.com, postmaster@capiitalone360.com, postmaster@capitaalone360.com, postmaster@capitallone360.com, postmaster@capitalne360.com, postmaster@capitaloe360.com, postmaster@capitalon360.com, postmaster@capitalone30.com, postmaster@capitalone350.com, postmaster@capitalone36.com, postmaster@capitalone369.com, postmaster@capitalone460.com, postmaster@capitalone60.com, postmaster@capitalonr360.com, postmaster@capitaone360.com, postmaster@capitlone360.com, postmaster@capittalone360.com, postmaster@360sid.com, postmaster@360sie.com, postmaster@36side.com, postmaster@cappitalone360.com, postmaster@captalone360.com, and postmaster@cpaitalone360.com. Also on February 4, 2013, 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 March 11, 2013, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant owns registrations for its CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 3,442,400 registered June 3, 2008.
2. Complainant also owns registrations for its CAPITAL ONE mark in countries throughout the world some of which include:
a. Austrian Patent Office (“APO”) (Reg. No. 217,216 registered May 10, 2004);
b. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 469,123 registered Jan. 21, 1997).
3. Complainant owns pending applications for the CAPITAL ONE 360 and the 360 family of marks (Application No. 8,518,238 application date Oct. 15, 2012.)
4. Complainant owns registrations for its BANK 360 mark with the USPTO (Reg. No. 3,715,177 registered Nov. 24, 2009).
5. Respondent’s disputed domain names are confusingly similar to Complainant’s CAPITAL ONE family of marks.
6. Respondent’s disputed domain names are also confusingly similar to Complainant’s BANK 360 marks.
7. Respondent’s disputed domain names are misspelled versions of Complainant’s registered mark.
8. Respondent has no rights or legitimate interests in the disputed domain names.
9. Respondent is not commonly known by the disputed domain names.
10. Complainant has never authorized Respondent to use its CAPITAL ONE or CAPITAL ONE 360 marks.
11. Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
12. Respondent’s disputed domain names resolve to pages providing search engines which lead to links to other financial businesses that compete with Complainant.
13. Respondent registered the disputed domain names in bad faith.
14. Respondent is using the disputed domain names in bad faith through its use of search engines and directories.
15. Respondent has a pattern of bad faith registration and use because of its registration of the twenty-three domain names in this case.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant owns registrations for its CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 3,442,400 registered June 3, 2008.
2. Complainant also owns registrations for its CAPITAL ONE mark in countries throughout the world some of which include:
a. Austrian Patent Office (“APO”) (Reg. No. 217,216 registered May 10, 2004);
b. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 469,123 registered Jan. 21, 1997).
3. Complainant owns registrations for its BANK 360 mark with the USPTO (Reg. No. 3,715,177 registered Nov. 24, 2009).
4. Complainant owns pending applications with USPTO for the CAPITAL ONE 360 mark and a family of other marks incorporating the number 360 (e.g., Application No. 8,518,238 application date Oct. 15, 2012.)
5. The Respondent registered the disputed domain names on various dates between June 12, 2012 to January 3, 2013. They resolve to websites featuring search engines and also provide links to third party companies 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 that it has trademark rights in CAPITAL ONE, 360 BANK, CAPITAL ONE 360 and a family of other marks embodying the number 360 including two marks that may be described as 360 CD.
The Panel finds for the reasons given below that Complainant has trademark rights in all of the marks referred to above and will now deal with them in order.
THE CAPITAL ONE MARK
Complainant argues that it has rights in the CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i). Complainant provides evidence of its trademark registrations with the follow agencies around the world, among others:
USPTO Reg. No. 3,442,400 registered June 3, 2008
INPI Reg. No. 1,787,271 registered April 10, 2000
APO Reg. No. 217,216 registered May 10, 2004
CIPO Reg. No. TMA 469,123 registered January 21, 1997.
The Panel accepts that evidence. Previous panels have found that evidence of registrations with a national trademark authority is evidence of rights in a mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The Panel thus finds that Complainant has established rights in its CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).
THE BANK 360 MARK
Complainant also claims it has rights in its BANK 360 mark through its registrations with the USPTO (Reg. No. 3,715,177 registered Nov. 24, 2009). Complainant has adduced evidence of those registrations that the Panel accepts.
Previous panels have found that a registration with the USPTO indicates rights in a given mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
THE CAPITAL ONE 360 MARK
Complainant does not have registered trademarks rights in CAPITAL ONE 360. However, the Panel is of the opinion that the totality of the unchallenged evidence shows that Complainant has rights in that mark. In the first place, panels have found that evidence of intent to use applications indicates rights in a given mark. See Phone-N-Phone Serv. (Bermuda) Ltd. v. Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that Complainant’s intent-to-use application bestowed rights in the PHONE-N-PHONE mark).
The evidence is that Complainant has applied to register the CAPITAL ONE 360 mark and to use it in its business. In particular Complainant relies on its application with the USPTO (Application No. 8,518,238 application date Oct. 15, 2012).
The Panel also finds that Complainant has established common law or unregistered trademark rights in the CAPITAL ONE 360 mark. This finding is made having regard to the affidavit evidence filed on behalf of Complainant showing that Complainant has applied to register CAPITAL ONE 360 and to use it for credit card and other financial services in the United States where Complainant has been active for several years, which the Panel accepts. The finding is also made on the basis of the evidence of an article in My Bank Trader for November 7, 2012 headed “ING Direct to be rebranded as Capital One 360” that recounts that Capital One closed a deal to acquire ING Direct in February 2012. The article also recounts a statement by a spokesperson for ING Direct that the parent bank resulting from that acquisition would be known as Capital One, the online bank would be known as Capital One 360 and that the number 360 was chosen to encapsulate the notion that the bank’s customers were surrounded by digital banking services to which they would have access when and where they wished, which the Panel takes to reference the 360 degrees of the compass and therefore meaning a universal service. It is already known that Complainant filed to register the trademark CAPITAL ONE 360 as the result of that business plan and on that basis the Panel finds Complainant has acquired common law or unregistered trademark rights in CAPITAL ONE 360.
THE FAMILY OF 360 MARKS
Complainant does not have registered trademarks rights in a series of other trademarks described as a family of 360 marks on which Complainant also relies for the purpose of the present proceedings.
However, the Panel is of the opinion that the totality of the unchallenged evidence shows that Complainant has rights in those marks. In the first place, panels have found on the basis of the decision referred to above that evidence of intent to use applications indicates rights in a given mark. The evidence, which the Panel accepts, is that Complainant has filed with USPTO to register each of the family of 360 marks as trademarks and to use them in its business.
The family of 360 marks includes the following, which are enumerated here as they will become significant later in this decision:
360 CD; No. 8574600; filed on October 4, 2012;
360 CD; No. 85718269; filed on August 31, 2012;
360 CHECKING; No. 85745960; filed on October 4, 2012;
360 CHECKING; No. 895718029; filed on August 31, 2012;
360 INTEREST CHECKING. No.85718401; filed on August 31, 2012.
The Panel also finds that Complainant has established common law or unregistered trademark rights in the family of 360 marks. This finding is made having regard to the affidavit evidence filed on behalf of Complainant showing that Complainant has applied to register the family of 360 marks and to use them for credit card and other financial services in the United States where Complainant has been active for several years, which the Panel, accepts. The finding is also made on the basis of the evidence of an article in My Bank Trader for November 7, 2012 headed “ING Direct to be rebranded as Capital One 360” that recounts that Capital One closed a deal to acquire ING Direct in February 2012. The article also recounts a statement by a spokesperson for ING Direct that the parent bank resulting from that acquisition would be known as Capital One, the online bank would be known as Capital One 360 and that the number 360 was chosen to encapsulate the notion that the bank’s customers were surrounded by digital banking services to which they would have access when and where they wished, which the Panel takes to reference the 360 degrees of the compass and therefore meaning a universal service. It is already known that Complainant filed to register the family of 360 trademarks as the result of that business plan and on that basis the Panel finds Complainant has acquired common law or unregistered trademark rights in the family of 360 marks.
The next question that arises is whether the disputed domain names are identical or confusingly similar to any of the trademarks in which the Panel has found Complainant has rights. The Panel finds that each of the domain names is confusingly similar to at least one of those trademarks.
The Panel will deal with the domain names in the following groupings to show the basis for its finding.
First, Complainant argues that respondent’s <capialone360.com>, <capiitalone360.com>, <capitaalone360.com>, <capitallone360.com>, <capitalne360.com>, <capitaloe360.com>, <capitalon360.com>, <capitalone30.com>, <capitalone350.com>, <capitalone36.com>, <capitalone369.com>, <capitalone460.com>, <capitalone60.com>, <capitalonr360.com>, <capitaone360.com>, <capitlone360.com>, <capittalone360.com>, cappitalone360.com>, <captalone360.com>, and <cpaitalone360.com> disputed domain names are confusingly similar to Complainant’s CAPITAL ONE mark and are misspellings or intentional typos in violation of Policy ¶ 4(a)(i). The Panel notes that all of the disputed domain names remove the spaces in Complainant’s CAPITAL ONE mark and add the generic top-level domain (“gTLD”) “.com.” The Panel notes that the <capialone360.com>, <capiitalone360.com>, <capitaalone360.com>, <capitallone360.com>, <capitalne360.com>, <capitaloe360.com>, <capitalon360.com>, <capitalone30.com>, <capitalone350.com>, <capitalone36.com>, <capitalone369.com>, <capitalone460.com>, <capitalone60.com>, <capitalonr360.com>, <capitaone360.com>, <capitlone360.com>, <capittalone360.com>, <cappitalone360.com>, <captalone360.com>, and <cpaitalone360.com> disputed domain names all misspell Complainant’s CAPITAL ONE mark by either adding additional letters and/or numbers or removing letters from the registered mark. Previous panels have found that these variations do not distinguish a disputed domain name from a registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Although in some of the domain names, the number 360 is retained and although in some cases the number is changed to 350, 30, 369, 460 or 60, the panel finds that internet users are more linkely than not to assume that whether those changes are accidental or deliberate , they are intended to relate to the 360 of Complainant’s trademarks. As the Panel agrees with the abogve propositions, the Panel finds that the <capialone360.com>, <capiitalone360.com>, <capitaalone360.com>, <capitallone360.com>, <capitalne360.com>, <capitaloe360.com>, <capitalon360.com>, <capitalone30.com>, <capitalone350.com>, <capitalone36.com>, <capitalone369.com>, <capitalone460.com>, <capitalone60.com>, <capitalonr360.com>, <capitaone360.com>, <capitlone360.com>, <capittalone360.com>, <cappitalone360.com>, <captalone360.com>, and <cpaitalone360.com> disputed domain names are confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i).
The Panel also finds for the same reasons that the foregoing domain names are confusingly similar to the CAPITAL ONE 360 marks in which Complainant has established trademark rights.
Secondly, Complainant claims that the <360sid.com>, <360sie.com>, and <36side.com> domain names are confusingly similar to Complainant’s 360 trademarks. The Panel notes that Complainant’s USPTO registered “360 trademarks” include the BANK 360 mark (Reg. No. 3,715,176 registered Nov. 24, 2009), and the remainder of the marks featuring “360” have a pending status.
The Panel notes that the <360sid.com> and <360sie.com>, domain names have one similarity with the BANK 360 mark, which is the use of the number “360.” The Panel finds that those two domain names are confusingly similar to the BANK 360 mark as the number 360 has been chosen and promoted by Complainant as an important mark for the purposes of conducting its business, the notion being that the banks’ customers are surrounded through 360 degrees by a range of banking services. Internet users are therefore likely to assume that the “360” in the two domain names is a reference to the “360” of the BANK 360 mark. The former are therefore likely to be regarded by internet users as confusingly similar to the latter.
The two domain names <360sid.com> and <360sie.com>, are also likely to be regarded by internet users as confusingly similar to the family of 360 marks in which Complainant has rights. That is so because of the prominent use of the number 360 in the domain names and the 360 marks.
Moreover, two of the family of 360 marks are marks for 360 CD, CD presumably evoking the banking abbreviation for Certificate of Deposit. That being so, internet users may well assume that the domain names are erroneous spellings of references to the services offered by Complainant under its trademarks, 360 CD. Accordingly, the Panel finds that the <360sid.com> and <360sie.com>,
domain names are confusingly similar to at least the two of the family of 360 marks referred to above, namely 360 CD.
The domain name <36side.com> is of course in a different category as it contains a “36” , but not the “0” and it is therefore a more difficult case to resolve. However, the Panel finds that the domain name is confusingly similar to the two 360 CD marks that are members of the family of 360 marks in which Complainant has trademark rights. It is well established that in making the comparison between a domain name and a trademark, a panel should have regard only to the text of both expressions. However, such questions cannot be decided in a complete vacuum and the test to be applied is what conclusion an objective bystander would reach in comparing the two. The objective bystander may well have to be taken to be apprised of certain facts to make an informed opinion. In the present case it is likely that internet users who are present or potential customers of Complainant and many others who are not, would be aware of the rebranding of ING Direct as Capital One 360, that the use of the number 360 was a deliberate policy to promote banking services through a notional 360 degrees and that 360 was a number by which Complainant’s services were becoming known. It is therefore probable, although by no means certain, that an internet user confronted by the domain name <36side.com> would assume that it was a deliberate or accidental alteration to the 360 of Complainant’s marks and a deliberate or accidental misspelling of CD, perhaps for non-English-speaking internet users, evoking one of the banking or credit services of Complainant offered under the 360 marks, namely certificates of deposit.
The Panel therefore finds that all of the disputed domain names are confusingly similar to one or more of Complainant’s trademarks.
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 names under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbara Prods., Inc. v. Enmity Commentaries, FA 741828 (Nat. Arc. 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. Gerber, FA 780200 (Nat. Arc. 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, BANK 360, CAPITAL ONE 360 and the family of 360 trademark, and to use them in its respective domain names, making changes to the spelling and the use of numbers in the trademarks, but with the result in each case that the domain name is confusingly similar to one or more of the trademarks, as explained above;
(b) Respondent has then caused the disputed domain names to resolve to websites featuring search engines and also provide links to third party companies some of which compete with Complainant;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d)Complainant claims that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by them. Complainant claims that the WHOIS information does not reflect that Respondent is commonly known by the disputed domain names. Complainant also contends that Complainant has never authorized Respondent to use any of its marks. Previous panels have found that this evidence is sufficient to find that Respondent is not commonly known by a disputed domain name according to Policy ¶ 4(c) (ii). See Braun Corp. v. Looney, FA 699652 (Nat. Arc. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain names because it is not commonly known by them;
(e)Complainant contends that Respondent does not possess rights or legitimate interests in the <capialone360.com>, <capiitalone360.com>, <capitaalone360.com>, <capitallone360.com>, <capitalne360.com>, <capitaloe360.com>, <capitalon360.com>, <capitalone30.com>, <capitalone350.com>, <capitalone36.com>, <capitalone369.com>, <capitalone460.com>, <capitalone60.com>, <capitalonr360.com>, <capitaone360.com>, <capitlone360.com>, <capittalone360.com>, <360sid.com>, <360sie.com>, <36side.com>, <cappitalone360.com>, <captalone360.com>, and <cpaitalone360.com> disputed domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent’s disputed domain names resolve to websites featuring search engines and also provide links to third party companies some of which compete with Complainant. The Panel notes that the websites resolving from Respondent’s disputed domain names appear generally similar in format, with various background colors, a search box in the top right corner, and links to third parties. The Panel notes that the <capiitalone360.com> domain name resolves to a page featuring links such as, “CHASE Slate (SM) Card,” “Discover card (Official),” “Walmart Money Card,” “Citi Credit Cards,” and “Master Card Credit Cards.” The Panel notes that the <capitaalone360.com> domain name features similar links including, “Citibank Credit Cards,” “Reward Credit Cards,” “Discover Card,” and “Mastercard Application.” The Panel notes that all of the resolving websites featuring similar links to companies that compete with Complainant’s business. The Panel also notes that some of the websites include both competing and noncompeting links. For example, the Panel notes that the <capitalne360.com> domain name resolves to a page featuring links such as “Struggling Sex Addiction,” and “Capital One Credit Cards.” Again, the Panel notes that the <capitalone369.com> domain name features links including, “Broadcast,” “Auctions,” “Animals,” “Capital One Credit Cards,” and “Citibank Credit Cards.” The Panel further notes that the <capitalon360.com> and <36side.com> domain names resolve to pages featuring third party unrelated sites including “Modern Dining Sets,” and “Office Depot Online.” Similarly the Panel notes that the <360sid.com> and <360sie.com> domain names feature links such as “Free Xbox Live Codes,” “Fixing Xbox 360,” and “GameFly – Official Site.” The Panel notes that the <capialone360.com>, <capitallone360.com>, <capitaloe360.com>, <capitalone30.com>, <capitalone350.com>, <capitalone36.com>, <capitalone460.com>, <capitalone60.com>, <capitalonr360.com>, <capitaone360.com>, <capitlone360.com>, <capittalone360.com>, <cappitalone360.com>, <captalone360.com>, and <cpaitalone360.com> domain names feature similar competing links as previously listed above. Previous panels have found that using a confusingly similar domain name to resolve to a page featuring links that compete with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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 pursuant to Policy ¶ 4(c)(iii)). Previous panels have also found that using a confusingly similar domain name to resolve to a website featuring unrelated third party links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The Panel thus finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names by having them resolve to websites featuring competing and unrelated links.
The Panel also finds with respect to all of the disputed domain names that the modus operandi of Respondent and how it has created and used them is such that Respondent does not have a right or legitimate interest in any of them.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent has registered and is using the <capialone360.com>, <capiitalone360.com>, <capitaalone360.com>, <capitallone360.com>, <capitalne360.com>, <capitaloe360.com>, <capitalon360.com>, <capitalone30.com>, <capitalone350.com>, <capitalone36.com>, <capitalone369.com>, <capitalone460.com>, <capitalone60.com>, <capitalonr360.com>, <capitaone360.com>, <capitlone360.com>, <capittalone360.com>, <360sid.com>, <360sie.com>, <36side.com>, <cappitalone360.com>, <captalone360.com>, and <cpaitalone360.com> disputed domain names in bad faith under Policy ¶ 4(b)(ii). Complainant claims that Respondent has a pattern of bad faith registrations and use based on it registering twenty-three domain names that are confusingly similar to Complainant’s CAPITAL ONE mark. Previous panels have generally found that a respondent registering multiple confusingly similar domain names in a short time frame indicates a pattern of bad faith conduct and therefore bad faith use and registration. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”). The Panel thus finds that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant claims that Respondent is disrupting its business by leading potential customers of Complainant away from its business and to commercial search engines that feature third party links, some of which compete with Complainant. Previous panels have found that this type of use for a disputed domain name disrupts and competes with a complainant’s business. 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).”). The Panel therefore finds that the <capiitalone360.com>, <capitalone369.com>, <capitaalone360.com>, <capialone360.com>, <capitalne360.com>, <capitallone360.com>, <capitaloe360.com>,<capitalone30.com>, <capitalone350.com>, <capitalone36.com>,<capitalone460.com>, <capitalone60.com>, <capitalonr360.com>, <capitaone360.com>, <capitlone360.com>, <capittalone360.com>, <cappitalone360.com>, <captalone360.com>, and <cpaitalone360.com> domain names were registered and used in violation of Policy ¶ 4(b)(iii) and hence in bad faith because of the featured links that compete with Complainant and thereby disrupt its business by diverting consumers to Complainant’s competitors.
Thirdly, Complainant contends that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant argues that Respondent is attracting Internet users to its websites by creating a likelihood of confusion with one or more of Complainant’s CAPITAL ONE, BANK 360, CAPITAL ONE 360 and family of 360 marks as to the source, sponsorship, affiliation or endorsement of the resolving website, and thereby commercially profiting from that confusion and the goodwill associated with Complainant. The Panel presumes that Respondent is profiting from pay-per-click fees as a result of the links featured on the resolving websites of the disputed domain names. Previous panels have found that misleading a complainant’s potential customers to a website featuring pay-per-click links that commercially benefit a respondent, is bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel agrees with the submissions of Complainant and therefore finds that Respondent has engaged in bad faith use and registration under Policy ¶ 4(b)(iv).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the various trademarks of Complainant referred to above and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names 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 <capialone360.com>, <capiitalone360.com>, <capitaalone360.com>, <capitallone360.com>, <capitalne360.com>, <capitaloe360.com>, <capitalon360.com>, <capitalone30.com>, <capitalone350.com>, <capitalone36.com>, <capitalone369.com>, <capitalone460.com>, <capitalone60.com>, <capitalonr360.com>, <capitaone360.com>, <capitlone360.com>, <capittalone360.com>, <360sid.com>, <360sie.com>, <36side.com>, <cappitalone360.com>, <captalone360.com>, and <cpaitalone360.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC Panelist
Dated: March 12, 2013
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