Capital One Financial Corp. v. Above.com Domain Privacy
Claim Number: FA1402001541914
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaleone360.com>, which is registered with ABOVE.COM PTY 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 February 3, 2014; the National Arbitration Forum received payment on February 3, 2014.
On February 5, 2014, ABOVE.COM PTY LTD. confirmed by e-mail to the Nat-ional Arbitration Forum that the <capitaleone360.com> domain name is regis-tered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.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 February 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@capitaleone360.com. Also on February 6, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 5, 2014, pursuant to Complainant's request to have the dispute decid-ed 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, founded in 1988, which offers a broad spectrum of financial products and services to consumers.
Complainant has continuously used the CAPITAL ONE mark to promote its products and services since its inception.
Complainant holds registrations for the CAPITAL ONE and the CAPITAL ONE 360 trademarks, both of which are on file with the United States Patent and Trademark Office (“USPTO”) (CAPITAL ONE: Reg. No. 3,442,400, registered June 3, 2008; and CAPITAL ONE 360: Reg. No. 4,404,709, registered Septem-ber 17, 2013, application filed August 31, 2012).
Respondent’s <capitaleone360.com> domain name was registered on January 15, 2013.
Respondent’s <capitaleone360.com> domain name is confusingly similar to Complainant’s CAPITAL ONE 360 mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has never authorized Respondent to use its CAPITAL ONE 360 mark in any way.
Respondent is not employing the domain name either to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain name resolves to a website featuring links to the websites of other financial institutions, including those that compete with Complainant.
Respondent has no rights to or legitimate interests in the <capitaleone360.com> domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered and is using the <capitaleone360.com> 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 360 mark 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 Australia). 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).
Moreover, it is irrelevant that Respondent’s domain name registration on January 15, 2013, pre-dates the effectiveness of Complainant’s trademark registration (September 17, 2013). This is because Policy ¶ 4(a)(i) makes no reference to the date on which the owner of a trademark or service mark acquired its rights in the mark. Accordingly, registration of a domain name before a complainant for-mally acquires trademark rights in a mark does not prevent a finding of identity or confusing similarity under Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <capitaleone360.com> domain name is confusingly similar to Complainant’s CAPITAL ONE 360 trademark. The domain name is simply a misspelled version of Complainant’s CAPITAL ONE 360 mark, with the elimination of the spaces between the elements of the mark and a letter “e” appended after the word “capital,” plus the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing simi-larity under the standards of the Policy. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from the mark of another from which it was derived).
See also Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”).
Further see 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 the terms of the mark of another and the addition of a gTLD do not establish distinctiveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i)). See also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007):
[T]he inclusion of the generic top-level domain ‘.com’ is inconse-quential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.
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 <capitaleone360.com> domain name, and that Complainant has never authorized Respondent to use its CAPITAL ONE 360 mark in any way. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Above.com Domain Pri-vacy,” 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 as contemplated in Policy ¶ 4(c)(ii). See, for example, Coppertown Drive-Thru Sys., LLC v. Snow-den, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent 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 Pol-icy ¶ 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 domain name).
We next observe that Complainant asserts, without objection from Respondent, that the <capitaleone360.com> domain name resolves to a website featuring links to the websites of other financial institutions, including those that compete with the business of Complainant. In the circumstances here presented, we may comfortably presume that Respondent seeks to profit from the operation of those links, whether by the receipt of click-through fees or otherwise. 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the do-main name <bravoclub.com> where that respondent used the domain name to operate a website containing links to various competing commercial websites, which the panel found not 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)).
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 dis-puted <capitaleone360.com> domain name as alleged in the Complaint disrupts Complainant’s business. This stands as proof of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See, for example, Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (find-ing that, where a respondent’s website resolving from a domain name which was confusingly similar to the mark of another, featured hyperlinks to competing web-sites, that use of the domain name constituted bad faith disruption under Policy ¶ 4(b)(iii)).
And because it is evident that Respondent seeks to profit from the confusion caused among Internet users as to the possibility of Complainant’s association with the <capitaleone360.com> domain name, this stands as proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003)
[I]t is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
For these reasons, the Panel 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 <capitaleone360.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 18, 2014
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