Capital One Financial Corp. v. YongHoon Lee / SoftTech
Claim Number: FA1404001555170
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is YongHoon Lee / SoftTech (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cap1.com>, registered with Domain.com, LLC.
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 April 22, 2014; the National Arbitration Forum received payment on April 22, 2014.
On April 22, 2014, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <cap1.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 April 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@cap1.com. Also on April 23, 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 May 14, 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.
Complainant
a) Complainant is the owner of the CAPITAL ONE mark, which it uses in connection with banking and financial services. 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).
b) The <cap1.com> domain name is confusingly similar to the CAPITAL ONE mark. The disputed domain name is a simple misspelling or typo an Internet users would make when typing in Complainant’s mark and it adds the generic top-level domain (“gTLD”) “.com.”
c) Respondent lacks both rights and legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the <cap1.com> domain name, and Respondent is not authorized to use the CAPITAL ONE trademark.
b. Respondent resolves the <cap1.com> domain name to a website hosting links to competing financial institutions such as Visa, American Express, and Discover.
d) The <cap1.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 <cap1.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 <cap1.com> domain name. Respondent is commercially benefiting from the valuable goodwill that Complainant has established in its CAPITAL ONE mark.
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 it has rights in the CAPITAL ONE mark, which it uses in connection with banking and financial services. Complainant has registrations for the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 2,065,991, registered May 27, 1997). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See 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 within the meaning of Policy ¶ 4(a)(i) because Complainant owns a valid trademark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that the <cap1.com> domain name is confusingly similar to the CAPITAL ONE mark. Complainant states that the disputed domain name is a simple misspelling or typo an Internet user would make when typing in Complainant’s mark, and it adds the gTLD “.com.” The Panel notes that the disputed domain name can also be viewed as an abbreviation of Complainant’s CAPITAL ONE mark where CAPITAL is abbreviated to “cap” and ONE is numerically depicted. The Panel agrees with Complainant and finds that using a typographical error of a trademark as a disputed domain name does not negate a finding of confusingly similarity. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). The Panel finds that abbreviating a complainant’s mark in a disputed domain name does not sufficiently distinguish the disputed domain name from the trademark. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta). The Panel finds that the addition of a gTLD and elimination of spacing is irrelevant for the purposes of confusing similarity analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Accordingly, the Panel finds that the <cap1.com> domain name is confusingly similar to the CAPITAL ONE mark pursuant to 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 contends that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant states that Respondent is not commonly known by the <cap1.com> domain name, and Respondent is not authorized to use the CAPITAL ONE trademark. The Panel notes that the WHOIS record for the disputed domain names list “YongHoon Lee” as the domain name registrant and “Soft Tech” as the registrant organization. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the available evidence on record in determining whether the respondent is commonly known by the disputed domain name. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the CAPITAL ONE mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <cap1.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims Respondent resolves the <cap1.com> domain name to a website hosting links to competing financial institutions such as Visa, American Express, and Discover. Previous panels have found that using a confusingly similar domain name to promote links of a complainant’s competitors does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the <cap1.com> domain name resolves to a website displaying links to Complainant’s competitors.
Complainant has proven this element.
Complainant contends that the <cap1.com> domain name was registered and is being used in bad faith. Complainant states that Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to competing financial websites including Visa, American Express, and Discover. Complainant argues that this use results in a disruption of Complainant’s business. In previous cases, panels have found that using a confusingly similar domain name to host links of a complainant’s competitors constitutes a bad faith disruption pursuant to Policy ¶ 4(b)(iii). 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). Therefore, the Panel finds that Respondent registered and is using the <cap1.com> domain name in bad faith under Policy ¶ 4(b)(iii) because the disputed domain name is being used to promote Complainant’s competitors.
Complainant alleges that Respondent’s resolution of the <cap1.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 <cap1.com> domain name. Complainant argues that Respondent is commercially benefiting from the valuable goodwill that Complainant has established in its CAPITAL ONE mark. Previous panels have found that such conduct demonstrates bad faith via attraction for commercial gain, pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds that Respondent registered and is using the <cap1.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the disputed domain name resolves to a website featuring links to Complainant’s competitors.
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 <cap1.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 20, 2014
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