Capital One Financial Corp. v. PPA Media Services / Ryan G Foo
Claim Number: FA1302001485206
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard of Richmond, Virginia, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonemascotchallenge.com>, registered with INTERNET.BS CORP.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 14, 2013; the National Arbitration Forum received payment on February 14, 2013.
On February 14, 2013, INTERNET.BS CORP. confirmed by e-mail to the Nat-ional Arbitration Forum that the <capitalonemascotchallenge.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current reg-istrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 15, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of March 7, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@capitalonemascotchallenge.com. Also on February 15, 2013, the Written Notice of the Complaint, notifying Re-spondent 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 22, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 does finance and banking business under the name and mark CAPITAL ONE.
Complainant holds registrations for the CAPITAL ONE trademark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,727,453, registered June 17, 2003).
Complainant has used the CAPITAL ONE MASCOT CHALLENGE mark for at least ten years, and has filed a pending trademark application for the mark with the USPTO (Serial No. 85,681,949, filed July 19, 2012).
Respondent registered the <capitalonemascotchallenge.com> domain name on November 12, 2009.
The domain name is confusingly similar to Complainant ‘s CAPITAL ONE mark.
Respondent has not been commonly known by the disputed domain name, and Complainant has not authorized Respondent to use the CAPITAL ONE mark.
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain name resolves to website featuring a search engine and links to finance-related websites which compete with Complainant’s business.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s use of the domain name disrupts Complainant’s business and is intended to work to Respondent’s commercial benefit.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the CAPITAL ONE trademark for purposes of Policy ¶ 4(a)(i) on the strength of its registration of the mark with a national trademark authority, the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a UDRP complainant had registered its mark with national trademark authorities, a Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Chile). See, for example, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (find-ing that it is irrelevant under Policy ¶ 4(a)(i) whether a UDRP complainant has acquired rights in a mark by means of registration of the mark in the country of a respondent’s residence, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).
Turning then to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <capitalonemascotchallenge.com> domain name is confusingly similar to Complainant’s CAPITAL ONE trademark. The domain name contains Complainant’s entire mark, with the deletion of the spaces between the terms of the mark and the addition of the generic Top Level Domain (“gTLD”) “.com” and the words “mascot challenge,” which are descriptive of an aspect of Complainant’s business. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be substantively identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
See also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that a respondent failed to differentiate the <aimprofiles.com> domain name from a UDRP complainant’s AIM mark by adding the term “profiles” to that complainant’s mark in forming a domain name).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, and that Complainant is not affiliated with Respondent and has not authorized Respondent to use the CAPITAL ONE mark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “PPA Media Services / Ryan G Foo,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legit-imate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii).
See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as described in Policy ¶ 4(c)(ii).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, in that the domain name resolves to web page featuring a search engine with links to finance-related websites which compete with Complainant’s business. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that a re-spondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use where “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that, by using the disputed domain name to link to websites that compete with the business of Complainant, Respondent disrupts Complainant’s business, which stands as proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
We are likewise convinced from the evidence that Respondent employs the dis-puted domain name to divert to Respondent’s site consumers who are searching for Complainant’s website, and that it does this for its commercial gain. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by employing a domain name that was confusingly similar to a UDRP complainant’s mark to offer links to third-party websites that featured services similar to those offered by that complainant).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <capitalonemascotchallenge.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 1, 2013
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