Capital One Financial Corp. v. RAKSHITA MERCANTILE PRIVATE LIMITED
Claim Number: FA1410001582802
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is RAKSHITA MERCANTILE PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uscapitalone.com>, registered with Tirupati Domains and Hosting Private Limited.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2014; the National Arbitration Forum received payment on October 1, 2014.
On October 2, 2014, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the National Arbitration Forum that the <uscapitalone.com> domain name is registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited 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 October 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@uscapitalone.com. Also on October 3, 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 October 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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).
2. Respondent’s <uscapitalone.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
3. Respondent is not commonly known by the <uscapitalone.com> domain name. The WHOIS record for the disputed domain name supports this claim, and Respondent is not authorized to use the CAPITAL ONE trademark.
4. Respondent resolves the <uscapitalone.com> domain name to a website hosting links to competing financial institutions such as Bank of America, Wells Fargo, PNC Bank and Sun Trust.
5. 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.
6. Respondent’s resolution of the <uscapitalone.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 <uscapitalone.com> 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 holds trademark rights for the CAPITAL ONE mark. Respondent’s domain name is confusingly similar to Complainant’s CAPITAL ONE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <uscapitalone.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 is the owner of the CAPITAL ONE mark, which it uses in connection with banking and financial services, including credit services. Complainant has registrations for the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 2,065,991 registered May 27, 1997). 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). Therefore, the Panel finds that Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <uscapitalone.com> domain name, registered on December 16, 2006, is confusingly similar to Complainant’s CAPITAL ONE mark as Respondent merely adds the geographic locator “us” and the generic top-level domain (“gTLD”) “.com.” The addition of terms which describe a geographic location where a complainant is located increases, rather than minimizes, confusing similarity. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Additionally, Respondent also deletes spacing from the mark in the domain name. Both Respondent’s deletion of spacing and addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. 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)). Accordingly, Repsondent’s <uscapitalone.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
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 <uscapitalone.com> 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 WHOIS record for the disputed domain name identifies “Rakshita Mercantile Private Limited” 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. Therefore, the Panel finds that Respondent is not commonly known by the <uscapitalone.com> domain name.
Complainant next alleges that the <uscapitalone.com> domain name resolves to a website hosting links to competing financial institutions such as Bank of America, Wells Fargo, PNC Bank and Sun Trust. 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)). Therefore, the Panel finds that Respondent’s use of the <uscapitalone.com> 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.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that the <uscapitalone.com> 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 states that this use results in a disruption of Complainant’s business. 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. Therefore, the Panel finds that Respondent’s registration and use of the <uscapitalone.com> domain name is disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant contends that the resolution of the <uscapitalone.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 <uscapitalone.com> 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. Similarly, the Panel finds that the <uscapitalone.com> domain name was registered and is used in bad faith under Policy ¶ 4(b)(iv).
The Panel finds 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 <uscapitalone.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 3, 2014
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