Capital One Financial Corp. v. Domain Admin
Claim Number: FA1404001555172
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Domain Admin (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneroutingnumber.com>, registered with GoDaddy.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin 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, GoDaddy confirmed by e-mail to the National Arbitration Forum that the <capitaloneroutingnumber.com> domain name is registered with GoDaddy and that Respondent is the current registrant of the name. GoDaddy has verified that Respondent is bound by the GoDaddy 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@capitaloneroutingnumber.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 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <capitaloneroutingnumber.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or legitimate interests in the <capitaloneroutingnumber.com> domain name.
3. Respondent registered and uses the <capitaloneroutingnumber.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the CAPITAL ONE mark in connection with offering financial services. Complainant has registered the CAPITAL ONE mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,065,991, registered May 27, 1997).
Respondent uses the <capitaloneroutingnumber.com> domain name to host advertisements for businesses that compete with Complainant.
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 Panel finds that Complainant’s USPTO registration establishes its rights in the CAPITAL ONE mark for purposes of Policy ¶ 4(a)(i). See Priceline.com, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1547179 (Nat. Arb. Forum Apr. 24, 2014) (finding that USPTO registration satisfied Policy ¶ 4(a)(i), even when the respondent was located in Saint Vincent and the Grenadines).
Respondent’s <capitaloneroutingnumber.com> domain name adds the descriptive terms “routing” and “number,” and the gTLD “.com” to Complainant’s CAPITAL ONE mark. The omission of the space in the mark is irrelevant. The panel in Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) found that gTLDs, spacing modifications, and the addition of descriptive terms made the domain name confusingly similar with respect to the complainant’s mark. The Panel finds that Respondent’s <capitaloneroutingnumber.com> domain name is confusingly similar to the CAPITAL ONE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 claims Respondent is not commonly known by the <capitaloneroutingnumber.com> domain name, and argues that there is nothing in the WHOIS record suggesting Respondent identifies by this domain name. Complainant has not authorized or approved Respondent’s use of its CAPITAL ONE mark. The WHOIS record lists “Domain Admin” as the registrant of record for the disputed domain name. The Panel finds that there is no basis for finding that Respondent is commonly known by the disputed domain name. See Jordan Cook p/k/a Reignwolf v. Ryan Crase, Ryan Crase Creative Media, FA 1520515 (Nat. Arb. Forum Oct. 28, 2013) (noting that past panels had “declined to make findings under Policy ¶ 4(c)(ii) when the respondent did not make any claim that it was actually known by the domain names. Th[is] Panel agrees that there is no evidence that Respondent is known by the <reignwolf.com> and <reignwolfmusic.com> domain names under Policy ¶ 4(c)(ii).”).
Complainant claims that Respondent fails to provide a bona fide offering through this <capitaloneroutingnumber.com> domain name. The Panel notes that the disputed domain name resolves to a website with a hyperlink directory to various businesses, some of which compete with Complainant. The Standard Bank of South Africa Ltd. v. dalvinder dhillon, FA 1527717 (Nat. Arb. Forum Dec.10, 2013) the panel found hyperlink listings to be insufficient bases for Policy ¶ 4(c)(i) bona fide offerings of goods or services. The Panel finds that Respondent failed to provide a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <capitaloneroutingnumber.com> domain name to host competing hyperlinks, demonstrating an intent to disrupt Complainant’s business. This constitutes bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent’s use of the disputed domain name to host advertisements for businesses that compete with Complainant illustrates the intent to confuse Internet users who may believe Complainant has some association with Respondent. Respondent no doubt profits from this confusion through advertising revenue. In AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) the panel found a likelihood of confusion when the domain name was used to promote hyperlinks to various third-party websites. The Panel finds that Respondent’s use of the domain name to profit from advertisements constitutes Policy ¶ 4(b)(iv) bad faith.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneroutingnumber.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 26, 2014
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