Capital One Financial Corp. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1402001541915
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone370.com>, registered with Internet.bs Corp.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2014; the National Arbitration Forum received payment on February 3, 2014.
On February 4, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <capitalone370.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant 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 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2014 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@capitalone370.com. Also on February 4, 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 March 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Complainant
a) Complainant is a major financial institution offering a broad spectrum of financial products and services to consumers, small businesses, and commercial clients.
b) Complainant has rights in the CAPITAL ONE mark and the CAPITAL ONE 360 mark. Complainant owns registrations for the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,065,991 registered May 27, 1997). Likewise, Complainant owns registrations for the CAPITAL ONE 360 mark with the USPTO (e.g., Reg. No. 4,401,562 registered Sept. 10, 2013; filed Aug. 31, 2012).
c) Respondent’s <capitalone370.com> is confusingly similar to Complainant’s CAPITAL ONE and CAPITAL ONE 360 marks. The disputed domain name incorporates Complainant’s CAPITAL ONE mark in its entirety and replaces the number “6” in Complainant’s CAPITAL ONE 360 mark with the number “7.”
d) Respondent does not have any rights or legitimate interests in the <capitalone370.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its CAPITAL ONE or CAPITAL ONE 360 marks in any way.
b. Respondent is using the <capitalone370.com> domain name to operate a website displaying a search engine, “related searches,” and “sponsored listings.” Some of the websites listed on the disputed domain name include Complainant’s competitors.
e) Respondent registered and is using the <capitalone370.com> domain name in bad faith.
a. Respondent is disrupting Complainant’s business by using the disputed domain name to promote links of Complainant’s competitors.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends it has rights in the CAPITAL ONE mark and the CAPITAL ONE 360 mark. Complainant states it owns registrations for the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 2,065,991 registered May 27, 1997). Likewise, Complainant states it owns registrations for the CAPITAL ONE 360 mark with the USPTO (e.g., Reg. No. 4,401,562 registered Sept. 10 2013; filed Aug. 31, 2012). The Panel notes that Respondent’s registration of the disputed domain name predates Complainant’s registration date for the CAPITAL ONE 360, but not Complainant’s CAPITAL ONE mark. Previous panels have determined, however, that rights under Policy ¶ 4(a)(i) are established dating back to the filing date of the trademark application. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel notes that the filing date for Complainant’s CAPITAL ONE 360 mark does predate the registration date of the disputed domain name. Additionally, the Panel notes that Respondent resides or operates in a different country than those in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in both the CAPITAL ONE mark and CAPITAL ONE 360 mark within the meaning of Policy ¶ 4(a)(i) that predate Respondent’s registration of the <capitalone370.com> domain name. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <capitalone370.com> is confusingly similar to Complainant’s CAPITAL ONE and CAPITAL ONE 360 marks. Complainant states that the disputed domain name incorporates Complainant’s CAPITAL ONE mark in its entirety and replaces the number “6” in Complainant’s CAPITAL ONE 360 mark with the number “7.” The Panel also notes that the disputed domain name removes all spaces that exist between terms in Complainant’s marks while also adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that changing a single character in a trademark used in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Similarly, the Panel finds that adding numerals to a trademark in a disputed domain name does not negate a finding of confusing similarity. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)). The Panel finds that the removal of spaces and addition of a gTLD are irrelevant for the purposes of confusing similarity analysis. 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 terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <capitalone370.com> is confusingly similar to Complainant’s CAPITAL ONE and CAPITAL ONE 360 marks within the meaning of Policy ¶ 4(a)(i).
Complainant has proven this element.
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 contends Respondent does not have any rights or legitimate interests in the <capitalone370.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its CAPITAL ONE mark or CAPITAL ONE 360 mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Domain Administrator” as the registrant’s name and “Fundacion Private Whois” as the registrant organization. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the CAPITAL ONE mark or CAPITAL ONE 360 mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <capitalone370.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the <capitalone370.com> domain name to operate a website displaying a search engine, “related searches,” and “sponsored listings.” Complainant states that some of the websites listed on the disputed domain name include Complainant’s competitors. The Panel notes that the links include “Low Fee Prepaid Card,” “Private Personal Loans,” and “Online Credit Card Application.” Id. Past panels have held that using a confusingly similar domain name to promote links of a complainant’s competitors does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the capitalone370.com> domain name to operate a website promoting links to Complainant’s competitors.
Complainant has proven this element.
Complainant contends Respondent registered and is using the <capitalone370.com> domain name in bad faith. Complainant alleges Respondent is disrupting Complainant’s business by using the disputed domain name to promote links of Complainant’s competitors. The Panel notes that the links include “Low Fee Prepaid Card,” “Private Personal Loans,” and “Online Credit Card Application.” Id. In previous cases, panels have found that using a confusingly similar domain name to display links to a complainant’s competitors constitutes a bad faith disruption under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Therefore, the Panel finds that Respondent registered and is using the <capitalone370.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent is using the disputed domain name to operate a website promoting links to Complainant’s competitors, thereby disrupting Complainant’s business.
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <capitalone370.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 7, 2014
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