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Capital One Financial Corp. v Domain Admin / Whois Privacy Corp.
Claim Number: FA1410001582803
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneautoloan.org>, registered with Internet.bs Corp.
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 October 1, 2014; the National Arbitration Forum received payment on October 1, 2014.
On October 10, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <capitaloneautoloan.org> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 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@capitaloneautoloan.org. Also on October 15, 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 November 10, 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
Complainant uses the CAPITAL ONE mark to identify its broad enterprise of financial and investment services. The mark has been registered with the United States Patent and Trademark Office (“USPTO”) and is recorded as such (e.g., Reg. No. 3,442,400, registered June 3, 2008). The <capitaloneautoloan.org> domain name adds in the descriptive phrase “auto loan”—a phrase descriptive of a secured loan offered to a consumer in exchange for Complainant taking a security interest in the chattel—and the addition of the “.org” generic top-level domain (“gTLD”) should not be considered a serious modification of the mark.
Respondent has no rights or legitimate interests in the <capitaloneautoloan.org> domain name. Respondent is not commonly known by this domain name because (1) the WHOIS record shows no association, and (2) Complainant has never authorized or endorsed this Respondent’s appropriation of the CAPITAL ONE mark in Internet domain names. Further, Respondent’s <capitaloneautoloan.org> domain name is being used to promote a website that features firms such as “American Express” and “Bank of America.”
Respondent has registered and used this <capitaloneautoloan.org> domain name in bad faith. Respondent is using the disputed domain name, as evidenced in Complainant’s exhibits, to send Internet users to competing offers in a disruptive manner. Respondent is profiting from a likelihood of confusion that Internet users will visit this website believing they are to be offered legitimate CAPITAL ONE services.
Respondent
Respondent did not 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 uses the CAPITAL ONE mark to identify its broad enterprise of financial and investment services. Complainant notes that the mark has been registered with the USPTO (e.g., Reg. No. 3,442,400, registered June 3, 2008). The USPTO registration constitutes sufficient evidence of Policy ¶ 4(a)(i) rights in this mark, regardless of where Respondent resides. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <capitaloneautoloan.org> domain name adds the descriptive phrase “auto loan”—a phrase descriptive of a secured loan offered to a consumer in exchange for Complainant taking a security interest in the chattel—and the gTLD “.org.” This Panel agrees that the descriptive phrase “auto loan” as included in this domain name enhances the confusing similarity of the domain name. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). The Panel further agrees that the addition of a gTLD and omission of the mark’s spacing is insufficient to avoid confusing similarity. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). As such, the Panel finds that the <capitaloneautoloan.org> 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 alleges that Respondent is not commonly known by this domain name because (1) the WHOIS record shows no association, and (2) Complainant has never authorized or endorsed this Respondent’s appropriation of the CAPITAL ONE mark in Internet domain names. “Domain Admin / Whois Privacy Corp.” is listed as the registrant of record of this disputed domain name. The Panel agrees there is no basis for finding Respondent to be commonly known by the disputed domain name under Policy ¶ 4(c)(ii) because there is no evidence that Respondent has ever been commonly known by the name <capitaloneautoloan.org>. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent’s <capitaloneautoloan.org> domain name resolves to a website that promotes firms that compete with Complainant’s business such as “American Express” and “Bank of America.” The Panel concludes that the use of the domain name for pay-per-click advertising is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Complainant has proven this element.
Complainant argues that Respondent is using the disputed domain name to send Internet users to competing offers in a disruptive manner. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel held that using a disputed domain name to host competing content could amount to an attempt to disrupt a complainant’s commercial operations. The Panel finds that the use of the <capitaloneautoloan.org> domain name to promote competing advertisements is Policy ¶ 4(b)(iii) bad faith.
Complainant claims that Respondent is profiting from a likelihood of confusion that Internet users will visit this website expecting to be offered legitimate CAPITAL ONE services. The Panel finds that such a use creates a likelihood of confusion under Policy ¶ 4(b)(iv) as Respondent is capitalizing on a confusingly similar domain name to promote advertisements through which Respondent presumably commercially benefits. 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.’”).
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 <capitaloneautoloan.org> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 13, 2014
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