Capital One Financial Corp. v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1302001487712
Complainant is Capital One Financial Corp. (“Complainant”), represented by Elizabeth L. Brooks, Virginia, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonecreditcard.com>, registered with FABULOUS.COM PTY LTD.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2013; the National Arbitration Forum received payment on February 28, 2013.
On February 28, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <capitalonecreditcard.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 March 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@capitalonecreditcard.com. Also on March 1, 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 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, either directly or via one of its wholly-owned subsidiaries, owns over 100 pending applications or registrations for Capital One all over the world and in the United States.
Respondent’s disputed domain name <capitalonecreditcard.com> is confusingly similar to Complainant’s CAPITAL ONE trademark, because Respondent’s domain name contains Complainant’s mark in its entirety. Moreover, the addition of the generic terms “credit card” which relate to Complainant’s business and the generic top-level domain “.com” to Respondent’s domain name is insufficient to distinguish the disputed domain name from Capital One’s mark.
Respondent is not commonly known by the at-issue domain name. The WHOIS information for the at-issue domain name does not reflect that Respondent is commonly known by the disputed domain name. Complainant has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant.
Respondent’s lack of rights or legitimate interests in the disputed domain name is further evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name <capitalonecreditcard.com> displays a search engine, “related searches” and “sponsored listings.” Specifically, Respondent’s website provides links to other financial institutions, such as Visa and American Express, including some of Complainant’s competitors. One reaches these pages by simply typing in the name of one of Complainant’s competitors, or by clicking on any of the “related searches” links depicted on the page. Such actions are sufficient to establish that Respondent’s actions are not in connection with a bona fide offering of goods or services.
Respondent is using the disputed domain name to display sponsored links to third-party websites, some of which offer credit card and banking services that compete with those offered under Complainant’s mark. This use results in a disruption of Complainant’s business through the confusion caused by the similarity between Complainant’s CAPITAL ONE mark and the disputed domain name. Respondent is benefiting from the valuable goodwill that Complainant has established in its mark and such actions are sufficient to establish the bad faith requirement.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns numerous trademark registrations throughout the world for its CAPITAL ONE mark.
Respondent registered the at-issue domain name subsequent to Complainant acquiring trademark rights in its CAPITAL ONE trademark.
Respondent is not authorized to use Complainant’s trademark.
The website addressed by the at-issue domain name displays a search engine, “related searches” and a number of “sponsored listings.” These devices provide links to third party financial institutions including some of Complainant’s competitors.
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.”).
Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights.
Complainant demonstrates its rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i) by showing it registered such mark with the USPTO as well as other recognized trademark registries worldwide. It is insignificant that Respondent may be located outside of such registries’ jurisdiction. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
To form the <capitalonecreditcard.com> domain name Respondent deletes the space between the terms in the Complainant’s mark, adds the descriptive term “creditcard” and appends the top level domain name, “.com” thereto. The inconsistencies between the resulting at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). See Wells Fargo & Company v. Pinnacle Management Group, Inc., FA1272346 (Nat. Arb. Forum August 18, 2009)(The addition of the terms “merchant services” which relate to Complainant’s business, does not distinguish the disputed domain name from Complainant’s mark. Moreover, the addition of the generic top-level domain “.com” also does not sufficiently distinguish the disputed domain name from Complainant’s mark because a top-level domain is a required element of all Internet domain names.); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the addition of a gTLD and the deletion of spaces in a mark are changes with no bearing on Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <capitalonecreditcard.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the <capitalonecreditcard.com> domain name as “Privacy Ltd. Disclosed Agent for YOLAPT.” Additionally, there is no evidence that tends to prove that, notwithstanding the aforementioned WHOIS record, Respondent is otherwise known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <capitalonecreditcard.com> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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).
The <capitalonecreditcard.com> domain name addresses a website which is designed to present site visitors with a variety of links to third parties some of whom compete with Complainant. Respondent’s use of the <capitalonecreditcard.com> domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As mentioned above, Respondent’s <capitalonecreditcard.com> domain name addresses a website where Respondent offers links to Complainant’s competitors. Using the domain name in this manner is disruptive to Complainant’s business. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Furthermore, Respondent’s use of the <capitalonecreditcard.com> domain name causes consumer confusion between Complainant’s business and the Respondent’s confusingly similar domain name. Thereby, Respondent benefits from the valuable goodwill that Complainant has in its CAPITAL ONE mark when a confused Internet user looking for Complainant mistakenly navigates to Respondent’s website. As revealed elsewhere herein, the at-issue domain name addresses a website offering links to third parties including some that compete with Complainant. It is without doubt that when a website visitor clicks on one of these links, revenue is generated for Respondent. These circumstances indicate that Respondent is attempting to attract, for commercial gain, Internet users to the <capitalonecreditcard.com> domain name by creating a likelihood of confusion with Complainant’s CAPITAL ONE mark. Therefore, the Panel additionally concludes that Respondent registered and uses the <capitalonecreditcard.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonecreditcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 8, 2013
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