Capital One Financial Corp. v. Alex Korbe / BidClimb
Claim Number: FA1402001542618
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Alex Korbe / BidClimb (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonecreditcardi.com>, registered with Register.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2014; the National Arbitration Forum received payment on February 7, 2014.
On February 7, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <capitalonecreditcardi.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 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@capitalonecreditcardi.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 The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions.
1. Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
a. Complainant is a major financial institution that provides financial products and services to consumers through the CAPITAL ONE mark.
b. Complainant owns over 100 pending applications or registrations for the CAPITAL ONE mark in the United States and internationally.
i. United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,989,909 registered July 5, 2011).
c. Respondent’s <capitalonecreditcardi.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
i. Respondent adds the generic term “credit card,” the letter “I,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <capitalonecreditcardi.com> domain name.
a. Respondent is not commonly known by the disputed domain name. The WHOIS information for the <capitalonecreditcardi.com> domain name lists the registrant as “Alex Korbe.”
b. Complainant has never authorized Respondent to use its mark in any way.
c. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s website provides links to competitors of Complainant’s including, American Express, MasterCard, and Visa.
3. Respondent registered and is using the <capitalonecreditcardi.com> domain name in bad faith.
a. Respondent uses the disputed domain name to resolve to a website displaying links to third party websites that compete with Complainant, which in turn, disrupts Complainant’s business.
b. Respondent is benefiting from the goodwill that Internet users associate with Complainant’s CAPITAL ONE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides financial and related products and services.
2. Complainant owns the trademark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,989,909 registered July 5, 2011) for CAPITAL ONE.
3. Respondent’s <capitalonecreditcardi.com> domain name was registered on May 23, 2013.
4. Respondent uses the disputed domain name to resolve to a website displaying links to third party websites that compete with Complainant, thereby disrupting Complainant’s business.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant states that it is a major financial institution that provides financial products and services to consumers through the CAPITAL ONE mark. Complainant claims that it has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i) in association with Complainant’s business use of the mark. Complainant argues that it owns over 100 pending applications or registrations for the CAPITAL ONE mark in the United States and internationally. Complainant provides evidence of its registrations for the CAPITAL ONE mark including its registration with the USPTO (E.g., Reg. No. 3,989,909 registered July 5, 2011). Prior panels have frequently found that providing evidence of a registration with a recognized trademark authority is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel thus concludes that Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CAPITAL ONE mark. Complainant additionally argues that Respondent’s <capitalonecreditcardi.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i). Complainant contends that Respondent adds the generic term “credit card” and the letter “i” and the gTLD “.com” to Complainant’s CAPITAL ONE mark. Prior panels have concluded that adding generic terms and gTLDs are insufficient to differentiate a disputed domain name from a given mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). The Panel notes that Respondent adds the letter “i” to the end of the disputed domain name as well as removing the space in Complainant’s mark. Panels have routinely found these variations to be inadequate to distinguish a disputed domain from a complainant’s registered mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also 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)). The Panel concludes that Respondent’s <capitalonecreditcardi.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CAPITAL ONE trademark and to use it in its domain name, adding the expression “credit card” and the letter “i”, thus implying that the domain name is an official domain name of Complainant leading to an official website of Complainant dealing with credit card services on behalf of Complainant;
(b) Respondent has then used the disputed domain name to resolve to a website displaying links to third party websites that compete with Complainant, thereby disrupting Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent has no rights or legitimate interests in the <capitalonecreditcardi.com> domain name under Policy ¶ 4(c)(ii) as Respondent is not commonly known by the disputed domain name. To support Complainant’s statement, it claims that the WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the <capitalonecreditcardi.com> domain name lists the registrant as “Alex Korbe.” Complainant further argues that it has never authorized Respondent to use its mark in any way. Prior panels have decided that a respondent is not commonly known by a disputed domain name where the WHOIS information or any other information in the record does not suggest that respondent is commonly known by it. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel concludes that Respondent is not commonly known by the <capitalonecreditcardi.com> domain name under Policy ¶ 4(c)(ii);
(e)Next, Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent’s website provides links to competitors of Complainant’s including, American Express, MasterCard, and Visa. The Panel notes Exhibit C displaying the website resolving from the disputed domain name. The Panel notes that Respondent’s resolving website features links such as “American Express-Savings,” “Debt Consolidation Loans,” “10 Best Credit Cards of 2014,” “Instant Credit Cards,” “Chase Credit Cards,” “Rewards Credit Cards,” and “Delta SkyMiles Card.” Panels have routinely decided that using a confusingly similar domain name to resolve to a website displaying third-party links that compete with a complainant does not convey rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and is using the <capitalonecreditcardi.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant claims that Respondent uses the disputed domain name to resolve to a website displaying links to third party websites that compete with Complainant, which in turn, disrupts Complainant’s business. Panels have frequently found that using a confusingly similar domain name to resolve to a website featuring links that compete with a complainant’s business disrupts complainant’s business in bad faith. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel thus finds that Respondent registered and is using the <capitalonecreditcardi.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant further argues that Respondent benefits from the goodwill that Internet users associate with Complainant’s CAPITAL ONE mark. Panels have generally found bad faith use and registration under Policy ¶ 4(b)(iv) when a respondent uses a confusingly similar domain name to attract and confuse Internet users to its resolving website and thereby profit from the confusion. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it 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.”). The Panel concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CAPITAL ONE mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonecreditcardi.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 6, 2014
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