Capital One Financial Corp. v. C W
Claim Number: FA1402001542251
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is C W (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonebusinesscreditcard.com>, registered with Moniker Online Services LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2014; the National Arbitration Forum received payment on February 4, 2014.
On February 5, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <capitalonebusinesscreditcard.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@capitalonebusinesscreditcard.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 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 John J. Upchurch 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 that offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients.
b) Complainant has rights in the CAPITAL ONE mark, used in connection with financial services. Complainant owns registrations for the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626 registered August 13, 1996).
c) Respondent’s <capitalonebusinesscreditcard.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic terms “business” and “credit card” as well as the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <capitalonebusinesscreditcard.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 mark in any way.
b. The <capitalonebusinesscreditcard.com> domain name does not contain any content and resolves to a blank page. See Complainant’s Exhibit C.
e) Respondent registered and is using the <capitalonebusinesscreditcard.com> domain name in bad faith.
a. The disputed domain name resolves to a blank inactive page, which represents a failure by the Respondent to make an active use of the disputed domain name.
Respondent
a) Respondent did not submit a Response in this proceeding.
b) The Panel notes that Respondent registered the <capitalonebusinesscreditcard.com> domain name on February 24, 2008.
1. Respondent’s <capitalonebusinesscreditcard.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or legitimate interests in the <capitalonebusinesscreditcard.com> domain name.
3. Respondent registered or used the <capitalonebusinesscreditcard.com> 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 contends it has rights in the CAPITAL ONE mark, used in connection with financial services. Complainant states it owns registrations for the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 1,992,626 registered August 13, 1996). Therefore, the Panel finds that Complainant has rights in the CAPITAL ONE mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns valid trademark registrations for the mark with the USPTO. 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 <capitalonebusinesscreditcard.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. Complainant notes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the generic terms “business” and “credit card” as well as the gTLD “.com.” First, the Panel finds that adding generic terms to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well -established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <capitalonebusinesscreditcard.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).
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 that Respondent does not have any rights or legitimate interests in the <capitalonebusinesscreditcard.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 in any way. The Panel notes that the WHOIS record for the disputed domain name lists “C W domains2007@c-w.net” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as 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, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <capitalonebusinesscreditcard.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that the <capitalonebusinesscreditcard.com> domain name does not contain any content and resolves to a blank page. See Complainant’s Exhibit C. In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panel found that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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). 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 pursuant to Policy ¶ 4(c)(iii) because Respondent has failed to make an active use of the <capitalonebusinesscreditcard.com> domain name.
Complainant contends that Respondent registered and is using the <capitalonebusinesscreditcard.com> domain name in bad faith. Complainant claims Respondent disputed domain name resolves to a blank inactive page, which represents a failure by the Respondent to make an active use of the disputed domain name. Past panels have found that failing to make an active use of a disputed domain name that is confusingly similar to a Complainant’s trademark represents bad faith registration and use. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). Therefore, the Panel finds that Respondent registered and is using the <capitalonebusinesscreditcard.com> domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <capitalonebusinesscreditcard.com> domain name shall be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 17, 2014
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