Capital One Financial Corp. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org
Claim Number: FA1402001542619
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneank.com>, registered with RegisterMatrix.com Corp.
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.
James A. Carmody, Esq., 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 14, 2014, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <capitaloneank.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com 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 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@capitaloneank.com. Also on February 14, 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 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <capitaloneank.com> domain name, the domain name at issue, is confusingly similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Capital One Financial Corp., is a major financial institution headquartered in McLean, Virginia. Complainant offers a broad spectrum of financial products and services to consumers, small businesses, and commercial clients and is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CAPITAL ONE mark (e.g., Reg. No. 1,992,626, registered August 13, 1996). Respondent’s <capitaloneank.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark because Respondent’s domain name is identical to Complainant’s mark. Moreover, additions of the misspelled generic term “bank” and the generic top-level domain (“gTLD”) “.com” to Respondent’s domain name is insufficient to distinguish the disputed domain name from Complainant’s mark.
Complainant has not authorized Respondent to use its CAPITAL ONE mark in a domain name, or otherwise. Respondent’s <capitaloneank.com> domain name displays a search engine, “related links”, “sponsored listings and links to third-party websites. Respondent registered the <capitaloneank.com> domain name on June 14, 2012.
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 is a major financial institution headquartered in McLean, Virginia which offers a broad spectrum of financial products and services to consumers, small businesses, and commercial clients. Complainant is the owner of trademark registrations with the USPTO for the CAPITAL ONE mark (e.g., Reg. No. 1,992,626, registered August 13, 1996). Although Respondent appears to reside and operate in Panama, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides, so long as it can establish rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel finds that Complainant’s registration of the CAPITAL ONE mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <capitaloneank.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. Respondent’s additions of the misspelled generic term “bank” and the gTLD “.com” to Respondent’s domain name is insufficient to distinguish the disputed domain name from Complainant’s mark. Respondent’s inclusion of a misspelled generic term is irrelevant to a Policy ¶ 4(a)(i) confusingly similar analysis. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). The Panel also notes that Respondent omits the spaces in Complainant’s CAPITAL ONE mark in its disputed domain name. Elimination of spaces in Complainant’s mark and inclusion of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, Respondent’s <capitaloneank.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the <capitaloneank.com> domain name. The WHOIS information identifies “Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org” as the registrant of the disputed domain name. Complainant has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Thus, the Panel finds that Respondent is not commonly known under the <capitaloneank.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s <capitaloneank.com> domain name displays a search engine, “related links”, “sponsored listings" and provides links to other financial institutions, such as “Visa,” “American Express,” and “MasterCard,” including some of Complainant’s competitors. An Internet user reaches these pages by simply typing in the name of one of Complainant’s competitors or by clicking on any of the related or sponsored links depicted on the page. Accordingly, Respondent is not using the <capitaloneank.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find 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 finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the <capitaloneank.com> domain name to display a search engine and links to third-party websites. Respondent’s disputed domain name resolves to a webpage featuring competing links titled “ONLINE BANKING,” “0% BALANCE TRANSFER CARDS,” “AMERICAN EXPRESS BUSINESS,” and others. This use results in a disruption of Complainant’s business through the confusion caused by the similarity between Complainant’s marks and the disputed domain name. Respondent is benefitting from the valuable goodwill that Complainant has established in its marks and such actions are sufficient to establish the bad faith requirement. This use of the domain name provides competing links that disrupt Complainant’s legitimate business. Accordingly, the Panel holds that Respondent has registered and is using the <capitaloneank.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneank.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 14, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page