Capital One Financial Corp. v. Above.com Domain Privacy
Claim Number: FA1402001544051
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ccapitalone360.com>, registered with Above.com Pty Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2014; the National Arbitration Forum received payment on February 18, 2014.
On February 18, 2014, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <ccapitalone360.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@ccapitalone360.com. Also on February 19, 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 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
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.
Complainant owns 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) and for the CAPITAL ONE 360 mark (e.g., Reg. No. 4,401,562, registered September 10, 2013).
Respondent’s <ccapitalone360.com> domain name is confusingly similar to Complainant’s CAPITAL ONE and CAPITAL ONE 360 trademarks because Respondent’s domain name is a simple misspelling of Complainant’s marks.
Respondent should be considered as having no rights or legitimate interests in respect of the <ccapitalone360.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent’s website provides links to other financial institutions, including some of Complainant’s competitors.
The disputed domain name should be considered as having been registered and being used in bad faith. Respondent is using the disputed domain name to display a search engine and related and sponsored links to third-party websites, some of which are owned by Complainant’s competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its CAPITAL ONE 360 mark.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the CAPITAL ONE 360 mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent is using the at-issue domain name to divert Internet users seeking Complainant’s business to a website hosting a commercial search engine and links to Complainant’s competitors.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates that it has rights in a mark for the purposes of the Policy by virtue of its USPTO registration for the CAPITAL ONE 360 mark. For the purposes of Policy ¶4(a)(i), it is irrelevant that Respondent may operate outside the jurisdiction of the relevant trademark registrar. 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, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that its is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The at-issue domain name contains Complainant’s entire trademark without the spaces, has the single letter “c” prefixed thereto and the top-level domain name “.com” appended to the resulting string. The subsequent differences between the domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶4(a)(i). Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s CAPITAL ONE 360 trademark. See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); see also. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), (finding that spaces and top level domain names are irrelevant to a Policy ¶ 4(a)(i) analysis.
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the <ccapitalone360.com> domain name as “Above.com Domain Privacy.” Additionally, there is no evidence that tends to prove that, notwithstanding the WHOIS record, Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <ccapitalone360.com> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <ccapitalone360.com> domain name addresses a website hosting a commercial search engine and apparent pay-per-links to competing financial institutions; to wit, Respondent’s website includes links to “AMERICAN EXPRESS CARDS,” “AMERICA EXPRESS,” “PAY YOUR CARD BILL,” and more. Using a confusingly similar domain name to display links in competition with the Complainant’s services is neither a bona fide use under Policy ¶ 4(c)(i), nor a legitimate or fair use of the domain name under Policy ¶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)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As mentioned above, the <ccapitalone360.com> domain name addresses a website hosting a search engine and a variety of links, some to Complainant’s competitors. Using the domain name in this manner is disruptive to Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”);see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding 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).
Furthermore, since the domain name addresses a website offering links to Complainant’s competitors and since it appears that Respondent intends to profit from the good faith associated with Complainant’s mark the Panel finds that Respondent is attempting to attract, for commercial gain, Internet users to the <ccapitalone360.com>website by creating a likelihood of confusion between Complainant’s CAPITAL ONE 360 mark and the at-issue domain name. Therefore, Respondent’s use of the at-issue domain name demonstrates bad faith under Policy ¶ 4(b)(iv), as well as under Policy ¶ 4(b)(iii). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ccapitalone360.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 18, 2014
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