Capital One Financial Corp. v. DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS
Claim Number: FA1404001555174
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone.co>, registered with CCI REG S.A.
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.
Darryl C. Wilson, 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, CCI REG S.A confirmed by e-mail to the National Arbitration Forum that the <capitalone.co> domain name is registered with CCI REG S.A and that Respondent is the current registrant of the name. CCI REG S.A has verified that Respondent is bound by the CCI REG S.A 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@capitalone.co. 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 Darryl C. Wilson 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. 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). See Complainant’s Exhibit A: Attachment 1.
2. The <capitalone.co> domain name is identical to the CAPITAL ONE mark
as Respondent merely adds the country code top-level domain (“ccTLD”) “.co” and removes the space in Complainant’s mark.
3. Respondent lacks both rights and legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the <capitalone.co> domain name. The WHOIS record for the disputed domain name supports this claim, and Respondent is not authorized to use the CAPITAL ONE trademark.
b. Respondent resolves the <capitalone.co> domain name to a website hosting links to competing financial institutions such as Citi, Bank of America, and Chase.
4. The <capitalone.co> 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 <capitalone.co> 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 <capitalone.co> domain name. Respondent is commercially benefiting from the valuable goodwill that Complainant has established in its CAPITAL ONE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Capital One Financial Corp. of Richmond VA, USA. Complainant owns numerous domestic and international registrations for the mark CAPITAL ONE and related marks comprising the family of CAPITAL ONE marks. Complainant has continuously used its marks in connection with the provision of a broad spectrum of banking and financial services since at least its 1997 USA registration.
Respondent is DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS of Panama. Respondent’s registrar’s address is listed as Panama as well. Respondent registered the <capitalone.co> domain name on or about August 31, 2010.
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 asserts that it is the owner of the CAPITAL ONE mark, which it uses in connection with banking and financial services, including credit services. Complainant demonstrates that it has registrations for the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 2,065,991 registered May 27, 1997). Prior Panels have found that, regardless of the location of the parties, the registration of a mark with a federal trademark authority is evidence of having rights in that mark. 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 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). The Panel here finds that Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant contends that the <capitalone.co> domain name is identical to the CAPITAL ONE mark as Respondent merely adds the ccTLD “.co” and removes the space in Complainant’s mark. Both Respondent’s deletion of spacing and addition of a ccTLD are irrelevant to a Policy ¶ 4(a)(i) analysis, according to previous panels. 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)); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). The Panel here finds that Respondent’s <capitalone.co> domain name is identical to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant asserts that Respondent lacks both rights and legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the <capitalone.co> domain name. Complainant argues that the WHOIS record for the disputed domain name supports this claim, and Respondent is not authorized to use the CAPITAL ONE trademark. The Panel notes that the WHOIS record for the disputed domain name identifies “Domain Administrator” as the domain name registrant. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. The Panel here finds that Respondent is not commonly known by the <capitalone.co> domain name.
Complainant next alleges that Respondent resolves the <capitalone.co> domain name to a website hosting “apply now” links to competing financial institutions such as Citi, Bank of America, and Chase. Prior Panels have found that using a confusingly similar domain name to display links in competition with the complainant’s services is not a use which falls within the protective realm of Policy ¶¶ 4(c)(i) and 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)). The Panel here finds that Respondent’s use of the <capitalone.co> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that the <capitalone.co> domain name was registered and is being used in bad faith. Complainant argues that Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to competing financial websites. Complainant contends that Respondent’s resolving website displays the links, “Low Interest Credit Cards,” which directly link to “Apply Now” destinations for various credit cards. Complainant states that this use results in a disruption of Complainant’s business. The Panel notes that in Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panel found 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. The Panel here finds that Respondent’s registration and use of the <capitalone.co> domain name is disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant next contends that Respondent’s resolution of the <capitalone.co> domain name to a website featuring links to competing third-party websites, such as Citi, Bank of America, and Chase, 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 <capitalone.co> domain name. Complainant asserts that Respondent is commercially benefiting from the valuable goodwill that Complainant has established in its CAPITAL ONE mark. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found 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. The Panel here finds that the <capitalone.co> domain name was registered and is used in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalone.co> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 28, 2014
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