Capital One Financial Corp. v. PPA Media Services / Ryan G Foo
Claim Number: FA1302001487809
Complainant is Capital One Financial Corp. (“Complainant”), represented by Elizabeth L. Brooks of 951 East Byrd Street, Virginia, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneplatinumvisa.com>, registered with INTERNET.BS CORP.
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 February 28, 2013; the National Arbitration Forum received payment on February 28, 2013.
On March 4, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <capitaloneplatinumvisa.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the names. 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 March 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@capitaloneplatinumvisa.com. Also on March 5, 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 April 1, 2013, 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.
i. Complainant holds multiple registrations of the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,992,626, registered Aug. 13, 1996).
ii. Complainant holds registrations for the CAPITOL ONE mark in multiple other countries, including registration with Chile’s Intellectual Rights Department (DDI), where Respondent claims to reside (Reg. No. 573,667 registered Aug. 9, 2000).
iii. Respondent registered the <capitaloneplatinumvisa.com> domain name on October 13, 2010.
iv. The disputed domain name contains Complainant’s mark in its entirety. The terms “platinum” and “visa” are terms used by Complainant in connection with its credit card products, and the generic top-level domain (“gTLD”) “.com” is irrelevant to the confusing similarity analysis.
i. Respondent is not commonly known by the disputed domain name, based on the WHOIS information and the fact that Complainant has not authorized Respondent to use the CAPITOL ONE mark.
ii. Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a search engine and links to finance-related websites, which compete with Complainant’s business.
i. Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s websites to a commercial search engine featuring links to Complainant’s competitors. This disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).
ii. Respondent is using the goodwill that Complainant has established in the mark for its own commercial benefit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its CAPITOL ONE mark.
2. Respondent’s <capitoloneplatinumvisa.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 claims rights in the CAPITAL ONE trademark based on its registration of the mark with the USPTO (e.g. Reg. No. 1,992,626, registered Aug. 13, 1996). See Complainant Exhibit A, Attachment 1. The Panel notes that Complainant has also registered the CAPITAL ONE mark in other countries, including registration with Chile’s Intellectual Rights Department (DDI), where Respondent claims to reside (Reg. No. 573,667 registered Aug. 9, 2000). See Complainant Exhibit A, Attachment 2. The Panel notes that previous panels have found that a complainant’s registration of a mark with multiple trademark agencies is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). The Panel therefore concludes that Complainant has established rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant claims the <capitaloneplatinumvisa.com> domain name is confusingly similar to Complainant’s CAPITAL ONE trademark under Policy ¶ 4(a)(i). The Panel notes that past panels have found that gTLDs and spaces are irrelevant to a Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be 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”). The Panel notes that the disputed domain name contains Complainant’s mark in its entirety, with the addition of the words “platinum” and “visa.” Complainant claims that these are descriptive words used in connection with its credit card services. Because past panels have found such descriptive words to be insufficient to distinguish a disputed domain name from a complainant’s trademark, the Panel finds that the <capitaloneplatinumvisa.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s 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 argues that Respondent has not been commonly known by the disputed domain name and has therefore not demonstrated rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). Complainant notes that the WHOIS information identifies “PPA Media Services / Ryan G Foo” as the registrant of the disputed domain name. Complainant also notes that it is not affiliated with Respondent and has not authorized Respondent to use the CAPITAL ONE mark. The Panel notes that past panels have found nominally unsupportive WHOIS information and a lack of authorization to be strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests through Policy ¶ 4(c)(ii).
Complainant also claims that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant claims the disputed domain name resolves to a search engine and links to finance-related sites which compete with Complainant’s business. (such as “Venture Capital” and “Financial Planning”). See Complainant Exhibit C. The Panel notes that past panels have found that the use of a disputed domain name to display competing hyperlinks does not demonstrate a bona fide offering or a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore the Panel finds that Respondent has not established rights or legitimate interests in the <capitaloneplatinumvisa.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant argues that, by using the disputed domain name to link to websites that compete with Complainant, Respondent is disrupting Complainant’s business and is demonstrating bad faith registration and use under Policy ¶ 4(b)(iii). The Panel notes that previous panels have found the display of competing links on a disputed domain name’s resolving website to constitute bad faith disruption 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).”). Accordingly, the Panel finds that Respondent registered and is using the <capitaloneplatinumvisa.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also claims that Respondent is using the disputed domain name to leech off of the goodwill Complainant has established in its mark, by using a confusingly similar domain name to divert consumers who are searching for Complainant to Respondent’s site instead. The Panel notes that past panels have found such diversionary tactics with competitive links to be evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). 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). Therefore the Panel holds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneplatinumvisa.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 15, 2013
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