Capital One Financial Corp. v. Wanzhongmedia / Zhong Wan
Claim Number: FA1402001542403
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Wanzhongmedia / Zhong Wan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone-autoloan.com>, registered with EuroDNS S.A.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 6, 2014; the National Arbitration Forum received payment February 6, 2014.
On February 7, 2014, EuroDNS S.A. confirmed by e-mail to the National Arbitration Forum that the <capitalone-autoloan.com> domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name. EuroDNS S.A. verified that Respondent is bound by the EuroDNS S.A. registration agreement and 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 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@capitalone-autoloan.com. Also on February 7, 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. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 makes the following allegations in this proceeding:
a) Complainant is the owner of the CAPITAL ONE mark, which it uses in connection with banking and financial services, including loans. Complainant has 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). See Complainant’s Exhibit A: Attachment 1.
b) The <capitalone-autoloan.com> domain name is confusingly similar to the CAPITAL ONE mark as Respondent merely adds the descriptive phrase “autoloan,” a hyphen, and the generic top-level domain (“gTLD”) “.com” as well as deleting the spacing in the mark.
c) Respondent lacks both rights and legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the <capitalone-autoloan.com> domain name. The WHOIS record for the disputed domain name supports this claim, and Respondent is not authorized to use the CAPITAL ONE trademark.
b. Respondent resolves the <capitalone-autoloan.com> domain name to a website hosting links to competing financial institutions such as Visa, American Express, and Discover.
d) The <capitalone-autoloan.com> domain name was registered and is being used in bad faith.
a. Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to competing financial websites. This use results in a disruption of Complainant’s business.
b. Respondent’s resolution of the <capitalone-autoloan.com> domain name to a website featuring links to competing third-party websites is meant to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <capitalone-autoloan.com> domain name. Respondent is commercially benefiting from the valuable goodwill that Complainant has established in its CAPITAL ONE mark.
Respondent did not submit a response in this proceeding.
The Panel notes that Respondent registered the <capitalone-autoloan.com> domain name March 14, 2010.
The Panel finds that Complainant established rights in its protected mark.
The Panel finds that Respondent has no such rights or legitimate interests in the mark that Respondent used to create the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s mark.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar
Complainant asserts that it is the owner of the CAPITAL ONE mark, which it uses in connection with banking and financial services, including loan services. Complainant demonstrates that it has registrations for the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 2,065,991 registered May 27, 1997). See Complainant’s Exhibit A: Attachment 1. Panels have found that, irrespective of the location of the parties, the registration of a mark with a federal trademark authority is evidence of having rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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 the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant next alleges that the <capitalone-autoloan.com> domain name is confusingly similar to the CAPITAL ONE mark as Respondent merely adds the descriptive phrase “autoloan,” a hyphen, and the gTLD “.com” as well as deleting the spacing in the mark. The Panel notes that the addition of descriptive terms has been found to fail to negate a finding of confusing similarity. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Panels have also held that punctuation, such as a hyphen, does not impact a determination of confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Additionally, the Panel notes that Respondent also deletes spacing from the mark in the disputed domain name. Both Respondent’s deletion of spacing and addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis, according to previous panels. 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)). Accordingly, the Panel finds that Repsondent’s <capitalone-autoloan.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 asserts that Respondent lacks both rights and legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the <capitalone-autoloan.com> domain name. Complainant argues that the WHOIS record for the disputed domain name supports this claim, and Respondent is not authorized to use the CAPITAL ONE trademark. The Panel notes that the WHOIS record for the disputed domain name identifies “Wanzhongmedia / Zhong Wan” as the domain name registrant. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Therefore, the Panel finds here that Respondent is not commonly known by the <capitalone-autoloan.com> domain name in accordance with Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent resolves the <capitalone-autoloan.com> domain name to a website hosting links to competing financial institutions such as Visa, American Express, and Discover. Panels have found that using a confusingly similar domain name to display links in competition with the complainant’s services is not a use that falls within the protective realm of Policy ¶¶ 4(c)(i) or 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). Therefore, the Panel finds that Respondent’s use of the <capitalone-autoloan.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services and it is not a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant asserts that the <capitalone-autoloan.com> domain name was registered and is being used in bad faith. Complainant argues that Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to competing financial websites. Complainant alleges that this use results in a disruption of Complainant’s business. The Panel notes that in Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panel found bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors. Therefore, the Panel finds that Respondent’s registration and use of the <capitalone-autoloan.com> domain name is disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s resolution of the <capitalone-autoloan.com> domain name to a website featuring links to competing third-party websites is meant to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <capitalone-autoloan.com> domain name. Complainant asserts that Respondent is commercially benefiting from the valuable goodwill that Complainant has established in its CAPITAL ONE mark. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes. Similarly, the Panel here finds that the <capitalone-autoloan.com> domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalone-autoloan.com> domain name BE TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 17, 2014.
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