Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd
Claim Number: FA1402001544053
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is DN Manager / Whois-Privacy.Net Ltd (“Respondent”), Vanuatu.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonemilerewards.com>, registered with FABULOUS.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.
Hon. Karl V. Fink (Ret.), 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 19, 2014, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <capitalonemilerewards.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.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 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 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@capitalonemilerewards.com. Also on February 20, 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 18, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
1. Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
a. Complainant’s business is a major financial institution founded in 1988 that helped pioneer the mass marketing of credit cards in the 1990s. Complainant offers a broad spectrum of financial products and services to consumers.
b. Complainant owns many registrations internationally and in the United States for the CAPITAL ONE mark, including:
i. United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,065,992 registered May 27, 1997);
ii. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA469,123 registered January 21, 1997);
iii. Danish Patent and Trademark Office (“DPTO”) (e.g., Reg. No. VR 001749 2004 registered June 2, 2004);
iv. Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 827,757 registered March 30, 2004);
v. Intellectual Property of New Zealand (“IPONZ”) (Reg. No. 291,041 registered April 15, 1999).
c. Respondent’s <capitalonemilerewards.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
i. Respondent’s <capitalonemilerewards.com> domain name contains Complainant’s CAPITAL ONE mark in its entirety. Respondent adds the words “mile” and “rewards” to Complainant’s mark. Respondent also adds the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <capitalonemilerewards.com> domain name.
a. Respondent is not commonly known by the disputed domain name. Complainant has never authorized or licensed Respondent to use its mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. Respondent’s resolving website displays a search engine, “sponsored results” and “related links.” Respondent’s resolving website provides links to other financial institutions, some of which compete with Complainant’s business.
3. Respondent has registered and is using the <capitalonemilerewards.com> domain name in bad faith.
a. Respondent uses the disputed domain name to divert Internet users searching for Complainant’s website to websites displaying third-party links to Complainant’s competitors.
b. Respondent is intentionally attracting Internet users to Respondent’s resolving website by creating a likelihood of confusion with Complainant’s CAPITAL ONE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 that it has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i). Complainant explains that its business is a major financial institution founded in 1988 that helped pioneer the mass marketing of credit cards in the 1990s. Complainant states that its company offers a broad spectrum of financial products and services to consumers. Complainant states that it owns many registrations with trademark authorities in the United States and internationally for the CAPITAL ONE mark, some of which include: USPTO (e.g., Reg. No. 2,065,992 registered May 27, 1997); CIPO (Reg. No. TMA469,123 registered January 21, 1997); DPTO (e.g., Reg. No. VR 001749 2004 registered June 2, 2004); MIIP (e.g., Reg. No. 827,757 registered March 30, 2004); and IPONZ (Reg. No. 291,041 registered April 15, 1999). Panels have routinely found that a complainant has rights in a given mark where the complainant provides evidence of its registrations for the mark with a recognized trademark authority. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO); see also Teck Res. Ltd. v. Amexa Ltda., FA 1420960 (Nat. Arb. Forum Jan. 27, 2012) (finding that a trademark registration with the MIIP was sufficient to establish rights in a mark under Policy ¶ 4(a)(i)); see also OMX, Inc. c/o OfficeMax Inc. v. Domain Admin. Ltd. c/o David Halstead, FA 720880 (Nat. Arb. Forum July 17, 2006)(Finding that complainant had established rights in the OFFICEMAX mark through registration of the mark with the USPTO and the IPONZ); see also Anheuser-Busch, Inc. v. Private Whois Service c/o butweiers-usa.com, FA 1335010 (Nat. Arb. Forum August 16, 2010) (finding complainant’s registrations with various international trademark authorities, including with the DPTO, sufficient to establish rights in complainant’s mark.). The Panel notes that it is irrelevant whether a complainant owns a registration for a mark in the location of respondent’s business. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel concludes that Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s <capitalonemilerewards.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i). Complainant asserts that Respondent’s <capitalonemilerewards.com> domain name contains Complainant’s CAPITAL ONE mark in its entirety. Complainant also argues that Respondent adds the words “mile” and “rewards” to Complainant’s mark. In addition to these variations, Respondent also adds the gTLD “.com.” Previous panels have frequently concluded that adding generic words and a gTLD to a complainant’s mark does not differentiate it from a complainant’s mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also 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). The Panel notes that Respondent’s <capitalonemilerewards.com> domain name also removes the space between the words in Complainant’s CAPITAL ONE mark. 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)). The Panel concludes that Respondent’s <capitalonemilerewards.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 asserts that Respondent has no rights or legitimate interests in the <capitalonemilerewards.com> domain name. Complainant explains that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that it has never authorized or licensed Respondent to use its mark in any way. The Panel notes that the WHOIS information for Respondent’s disputed domain name lists “DN Manager” as registrant. Panels have continuously found that a respondent is not commonly known by a disputed domain name where there is no information on the record or otherwise indicating that the respondent is commonly known by that domain name, such as through a complainant’s authorization or through the WHOIS information. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel concludes that Respondent is not commonly known by the <capitalonemilerewards.com> domain name under Policy ¶ 4(c)(ii).
Complainant additionally 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 under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant explains that Respondent’s resolving website displays links and advertisements, some of which compete with Complainant’s business. The Panel notes that Respondent’s resolving website displays links such as, “Credit Card Reward Points,” “Redeem Reward Points,” “AmEx Credit Card Services,” “10 Best Credit Cards 2014,” “Chase Credit Cards,” “Online Bank Info,” “MasterCard Credit Cards,” “Capital One Master Card,” and “MasterCard- Apply Now.” Prior panels have frequently found that a respondent has no rights or legitimate interests in a disputed domain name if it is used to resolve to a website featuring links and advertisements for third-party businesses that compete with a complainant. 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 concludes that Respondent has no rights or legitimate interests in the <capitalonemilerewards.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant has proven this element.
Complainant asserts that Respondent has registered and is using the <capitalonemilerewards.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant explains that Respondent uses the disputed domain name to divert Internet users searching for Complainant’s website to websites displaying third-party links to Complainant’s competitors as well as a “Search Ads” option. Prior panels have regularly found that using a disputed domain name to feature links, search engines, and advertisements that compete with a complainant disrupts complainant’s business in bad faith. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel concludes that Respondent has registered and is using the <capitalonemilerewards.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant further contends that Respondent registered and is using the <capitalonemilerewards.com> domain name in bad faith under Policy ¶ 4(b)(iv). According to Complainant, Respondent is intentionally attracting Internet users to Respondent’s resolving website by creating a likelihood of confusion with Complainant’s CAPITAL ONE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant also contends that Respondent is luring Internet users to its website in order to commercially profit from the goodwill that Internet users associate with Complainant’s CAPITAL ONE mark. Previous panels have found bad faith use and registration under Policy ¶ 4(b)(iv) when a respondent uses a confusingly similar domain name to attract Internet users to a website with the intent to confuse potential consumers, and compete with the complainant. 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 <capitalonemilerewards.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <capitalonemilerewards.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 21, 2014
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