Capital One Financial Corp. v. SMVS CONSULTANCY PRIVATE LIMITED
Claim Number: FA1401001540684
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is SMVS CONSULTANCY PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonemilesreward.com>, registered with Tirupati Domains and Hosting Pvt Ltd..
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 January 24, 2014; the National Arbitration Forum received payment on January 24, 2014.
On January 27, 2014, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <capitalonemilesreward.com> domain name is registered with Tirupati Domains and Hosting Pvt Ltd. and that Respond-ent is the current registrant of the name. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dis-pute Resolution Policy (the “Policy”).
On January 27, 2014, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of February 18, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@capitalonemilesreward.com. Also on January 27, 2014, 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 February 24, 2014, 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 is a major financial institution offering a broad spectrum of financial products and services to consumers, small businesses and commercial clients.
Complainant has used the CAPITAL ONE and CAPITAL ONE BANK marks to promote its products and services since its inception in 1988.
Complainant holds a registration for the CAPITAL ONE trademark, which is on file with the United States Patent and Trademark Office ("USPTO") (Registry No. 1,992,626, registered August 13, 1996).
Complainant owns the <capitalonemiles.com> and <capitalonereward.com> domain names.
Respondent registered the disputed <capitalonemilesreward.com> domain name on December 27, 2006.
The domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not authorized to use the CAPITAL ONE mark.
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The <capitalonemilesreward.com> domain name resolves to a website displaying links to the websites of other financial institutions operating in competition with the business of Complainant.
Respondent does not have any rights to or legitimate interests in the disputed domain name.
Respondent employs the domain name to benefit commercially by attracting In-ternet users to the resolving website by creating confusion among them as to the possibility of Complainant’s endorsement of that website.
Respondent both registered and uses the 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) by reason of its registration of the mark with a national trademark author-ity, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), finding that a UDRP complainant had established rights to its mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO.
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 India). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has reg-istered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction). To the same effect, see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <capitalonemilesreward.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. The domain name contains Complainant’s entire mark, with only the deletion of the space between its terms and the addition of the generic terms “miles” and “rewards,” which relate to an aspect of Complainant’s business, plus the generic top-level domain (“gTLD”) “.com.” These alterations of the mark in forming the domain name, do not avoid a finding of confusing similarity under the standards of the Policy. See Capital One Financial Corp. v. Above.com Domain Privacy, FA 463496 (Nat. Arb. Forum October 23, 2012) where a panel concluded: “Respondent merely adds the descriptive term ‘card,’ the generic term ‘now,’ and the top level domain name, ‘.com’ to Complainant’s mark and deletes the space between words in the mark. The resulting inconsistencies between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i).”).
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) (holding 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 out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name <capitalonemilesreward.com>, and that Complainant has not authorized Re-spondent to use the CAPITAL ONE mark. Moreover, the WHOIS information identifies the registrant of the domain name only as “SMVS CONSULTANCY PRIVATE LIMITED,” 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 acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a re-spondent was not commonly known by the <coppertown.com> domain name, and so failed to demonstrate that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has not used the <capitalonemilesreward.com> domain name in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use, in that the domain name resolves to a website that dis-plays links to the websites of Complainant’s commercial competitors, from the operation of which links Respondent intends to profit. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the websites of a UDRP complainant’s competitors in the financial ser-vices industry).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the disput-ed <capitalonemilesreward.com> domain name as alleged in the Complaint dis-rupts Complainant’s business. This stands as proof of bad faith in the registra-tion and use of the domain name under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel there finding that a respondent engaged in bad faith registration and use of contested domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a website with links to websites offering the products of that complainant’s competitors.
We are likewise convinced by the evidence that Respondent uses the contested domain name, which is confusingly similar to Complainant’s CAPITAL ONE trademark, to profit by attract Internet users to the resolving website through the creation of confusion as to the possibility of Complainant’s endorsement of this website. This demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a web-site which features links to competing … commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith regis-tration and use pursuant to Policy ¶ 4(b)(iv).
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 <capitalonemilesreward.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 10, 2014
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