Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd
Claim Number: FA1410001583409
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is DN Manager / Whois-Privacy.Net Ltd (“Respondent”), Vanuatu.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonebnk.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2014; the National Arbitration Forum received payment on October 6, 2014.
On October 6, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <capitalonebnk.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@capitalonebnk.com. Also on October 9, 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 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant, either directly or via one of its wholly-owned subsidiaries, owns over 100 pending applications or registrations for the CAPITAL ONE mark all over the world and in the United States.
For example, as indicated in the chart below, Complainant owns registrations in the United States for the CAPITAL ONE mark. Complainant provides banking and financial services under these registrations.
CAPITAL ONE BANK 3993433 Banking Services (Int. Cl. 36)
CAPITAL ONE BANK 3993436 Banking Services (Int. Cl. 36)
CAPITAL ONE 3989909 Credit Card Services (Int. Cl. 36)
CAPITAL ONE 3442400 Banking and financial services, namely, credit card services; mortgage lending and home equity loans; farm equipment, automobiles and recreational vehicle financings; secured and unsecured installment loans; certificate of deposits, individual retirement account, money market, and checking accounts; investment brokerage including stocks, bonds, and mutual funds; retirement planning; trust services; and management of mutual funds, insurance services, namely, brokerage and administration of insurance in the field of life, health, disability, dental, vision, property, and casualty (Int. Cl. 36)
CAPITAL ONE BANK 3419972 Banking and financial services, namely, credit card services; mortgage lending and home equity loans; farm equipment, automobiles and recreational vehicle financings; secured and unsecured installment loans; certificate of deposits, individual retirement account, money market, and checking accounts; investment brokerage including stocks, bonds, and mutual funds; retirement planning; trust services; and management of mutual funds, insurance services, namely, brokerage and administration of insurance in the field of life, health, disability, dental, vision, property, and casualty (Int. Cl. 36)
CAPITAL ONE 360 4404709 Banking services (Int. Cl. 36)
CAPITAL ONE 360 4401562 BANKING SERVICES (INT. CL. 36)
CAPITAL ONE LABS 4310380 Banking and Financial Services (Int. Cl. 36)
CAPITAL ONE HEALTHCARE FINANCE 3762392 Financial services, namely, unsecured loans for Dental, Orthodontics, Vision, Cosmetic, and Reproductive Treatments and Procedures (Int. Cl. 36)
CAPITAL ONE AUTO FINANCE 2586340 Motor vehicle financing services (Int. Cl. 36)
CAPITAL ONE 2727453 Financial services, namely commercial banking; processing, funding, underwriting and administering annuities; financial card and debit card services, namely processing, underwriting, issuing, servicing and administering [chip cards,] debit cards, corporate card; electronic funds transfer provided through automated teller machines; investment consultant, namely financial and investment planning and consulting; consumer and commercial leasing financing; real estate financing, namely commercial equity financing (Int. Cl. 36)
CAPITAL ONE 1992626 Financial services, namely commercial banking; processing, funding, underwriting and administering annuities; financial card and debit card services, namely processing, underwriting, issuing, servicing and administering [chip cards, debit cards, corporate card; electronic funds transfer provided through automated teller machines; investment consultant, namely financial and investment planning and consulting; consumer and commercial leasing financing; real estate financing, namely commercial equity financing (Int. Cl. 36)
CAPITAL ONE 2065991 Credit card services, namely processing, underwriting, issuing, servicing and administering credit cards and secured cards (Int. Cl. 36)
CAPITAL ONE 2065992
Financial services, namely consumer banking, namely secured and unsecured consumer installment lending; real estate financing, namely mortgage lending; and home equity loans (Int. Cl. 36)
Complainant also owns registrations for the CAPITAL ONE mark in more than fifteen countries, including Canada, Mexico, Germany, Austria, India, Monaco and Chile. The services for these registrations include banking and financial services.
CAPITAL ONE APTITUDE Canada TMA000000 Financial services, namely credit card services (1)
CAPITAL ONE EXPRESS LOUNGE Canada TMA000000 Credit card services; airport lounge services; travel services, namely, offering a variety of amenities to travelers at airports while awaiting departure, namely, VIP lounges, complimentary snacks and beverages, access to telephones, computers, televisions and electronic device charging stations (1)
CAPITAL ONE SMARTLINE Canada TMA000000 Financial services, namely credit card services (1)
CAPITAL ONE MILLION DOLLAR BUTTON & DESIGN Canada TMA772950 Credit card services and promoting the sale of credit card services through promotional contests (1)
CAPITAL ONE LINE Canada TMA718401 Financial services, namely credit card services (1)
CAPITAL ONE Canada TMA469123 Credit card services (1)
CAPITAL ONE DESIGN Canada TMA469182 Credit card services (1)
CAPITAL ONE Mexico 827757 Insurance; financial affairs, monetary affairs; real estate matters, including services for credit cards (36)
CAPITAL ONE AUTO FINANCE Mexico 827758 Insurance; financial affairs; monetary affairs; matters real estate including financing services for vehicles for motor (36)
CAPITAL ONE AUTO FINANCE Mexico 824128 Insurance; financial affairs; monetary affairs; matters real estate including financing services for vehicles for motor (36)
CAPITAL ONE Mexico 834939 Insurance services and finance; comprising credit card services, debit card services, services for integrated circuit cards (chips), smart card services, services for awarding than lending, comprising pre -stamos- than installment loans and other lending for consumers, financing services than cars, credit lines for purchasing than residences (36)
CAPITAL ONE Mexico 629372 Insurance services and finance; comprising credit card services, debit card services, services for integrated circuit cards (chips), smart card services, services for awarding than lending, comprising pre -stamos- than installment loans and other lending for consumers, financing services than cars, credit lines for purchasing than residences (36)
CAPITAL ONE Argentina 1787271 International whole class (36)
CAPITAL ONE Brazil 821183613 Banking services and credit, financing and INVESTMENT; services of capture of savings of loans and real estate credit, insurance underwriting and REINSURANCE (36)
CAPITAL ONE Chile 573667 Financing, services for credit lines than commercial houses. Notes: without protection to expressions capital singly considered. incl service financial; comprising credit card services, debit card services, services for cards chip, smart card services, letting service; comprising lending to broad installment and lending than consumption, auto leasing services. (36)
CAPITAL ONE Columbia 306772 Banking and financial services; mainly credit card services; lending by installments insured and without securing; services for account than saving comprising certificates than deposits accounts than retirement individual and accounts than savings with right than turn than cheques; lending storage units than -equidad- and lending than mortgage; financing than cars; insurance agency and broking in the field of insurance for house and cars (36)
CAPITAL ONE Venezuela S015149 Financial services and than assurance, comprising credit card services and debit, services for cards chip and smart cars, lending comprising lending by quotas and others lending to consumer, lease than cars and financing services, credit lines for house guaranteeing with mortgage and the like (36)
CAPITAL ONE Austria 217217 Insurance business, finance, money transactions, banking, exchanging money, processing of money transaction with credit, debit, magnetic and chip cards, issuing credit, debit, magnetic and chip cards, issue of smartcards, electronic money transfer, issuing of travellers’ checks, credit bureaus, installment loans, lease purchase financing, car financing services, leasing in connection with cars, lending of sureties and bails, mortgage business, loans consulting for aforesaid services (36)
CAPITAL ONE Austria 217216 Insurance business, finance, money transactions, banking, exchanging money, processing of money transaction with credit, debit, magnetic and chip cards, issuing credit, debit, magnetic and chip cards, issue of smartcards, electronic money transfer, issuing of travellers’ checks, credit bureaus, installment loans, lease purchase financing, car financing services, leasing in connection with cars, lending of sureties and bails, mortgage business, loans consulting for aforesaid services (36)
CAPITAL ONE Greece Application No. 149332 Insurance and financial services (36)
CAPITAL ONE Greece Application No. 149333 Insurance and financial services (36)
CAPITAL ONE Monaco 21724 Insurance and financial services (36)
CAPITAL ONE Spain 2417089 M5 Financial Services (36)
CAPITAL ONE BUSINESS PREMIER CARD Community Trademarks 4516951 Computer hardware and software; computer programs; credit cards; magnetic cards; encoded cards; chip cards; smart cards; magnetic data carriers, data processing equipment and computers; card readers for credit cards; credit card terminals. (09); Advertising; credit card registration services; provision of credit card rewards based programs; preparation of monthly statements of account; provision of monthly statements of account. (35); Insurance; financial services; monetary affairs; banking; issuing of monthly statements of account; credit card services; debit card services; magnetic card services; chip card services; smart card services; electronic funds transfer services; issuance of credit, debit and magnetic cards; credit card payment processing; lending services; advisory, consultancy and information services related to all of the aforesaid. (36)
CAPITAL ONE India Application No. 1273216 Financial services included in Class 36
CAPITAL ONE India Application No. 1273217 Financial services included in Class 36
CAPITAL ONE New Zealand 291041 Insurance and financial services, including credit card services, debit card services, chip card services, smart card services, lending services, including installment loans and other consumer loans, financing services, home equity lines of credit in this class (36)
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] Complainant has legitimate rights to the CAPITAL ONE mark, and the disputed domain name <capitalonebnk.com> is identical or confusingly similar to Complainant’s trademarks. See Capital One Financial Corp. v. Domain Administrator / Fundacion Private Whois, FA1550023 (Nat. Arb. Forum April 29, 2014) (finding that “Complainant has rights in the CAPITAL ONE 360 trademark for purposes of Policy ¶4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO.”); see also Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (Nat. Arb. Forum March 25, 2014) (finding that Complainant’s USPTO registration for the CAPITAL ONE mark satisfies the Policy ¶4(a)(i) rights requirement, regardless of where Respondent resides.”); see also Capital One Financial Corp. v. Paydayloanz.com, FA463493 (Nat. Arb. Forum October 22, 2012) (concluding that Complainant has “secured rights in its CAPITAL ONE mark through its various global trademark registrations.”); see also Capital One Financial Corp. v. MGA Enterprises Ltd., FA 467312 (Nat. Arb. Forum December 10, 2012) (finding that “Complainant has rights in the CAPITAL ONE trademark under Policy ¶4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO….[t]his is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Complainant’s residence or place of business.”); see also Capital One Financial Corp. v. William/ William Boggs, FA 482996 (Nat. Arb. Forum March 12, 2013) (finding that the “domain names are confusingly similar to the CAPITAL ONE 360 marks in which Complainant has established trademark rights.”). UDRP Policy ¶4(a)(i).
Complainant, Capital One Financial Corp., is a major financial institution headquartered in McLean, Virginia. Capital One was founded in 1988 and helped pioneer the mass marketing of credit cards in the early 1990s. Complainant offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients. Complainant has consistently used the CAPITAL ONE mark to promote its goods and services since its inception.
Respondent’s disputed domain name <capitalonebnk.com> is confusingly similar to Complainant’s CAPITAL ONE and CAPITAL ONE BANK trademarks because Respondent’s domain name is a simple misspelling or typographical error that an Internet user might make when typing in Complainant’s mark. Moreover, to the extent Respondent claims that the term “bank” insulates it, the additions of the generic term “bank,” which directly relates to Complainant’s business, as well as the generic top-level domain “.com” to a domain name are insufficient to distinguish a disputed domain name and a mark. See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also Capital One Financial Corp. v. Zhichao Yang, FA 1473336 (Nat. Arb. Forum January 9, 2013) (finding that “Respondent’s disputed domain names are confusingly similar to Complainant’s CAPITAL ONE mark because the domain names are merely typographical errors of the mark, which do not sufficiently distinguish the disputed domain name from Complainant’s mark.”).; see also Capital One Financial Corp. v. CW Inc., FA 1527001 (Nat. Arb. Forum November 25, 2013) (concluding that “the at-issue domain name is confusingly similar to Complainant’s CAPITAL ONE trademark” and that “the addition of ‘rewards’ to Complainant’s mark only serves to increase confusion between the domain name and the mark since the term suggests Complainant’s credit card business which may feature a rewards program.”); see also Capital One Financial Corp. v. Domain Admin / Taranga Services Pty Ltd, FA 1544052 (Nat. Arb. Forum April 2, 2014) (finding that “Respondent’s <capitaloneonlinepayment.com> domain name is confusingly similar to the CAPITAL ONE mark under Policy ¶4(a)(i)” because “…Respondent merely adds the generic phrase ‘online payment’ and the gTLD ‘.com’ to the mark.”); see also Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (Nat. Arb. Forum March 25, 2014) (finding that “Respondent’s <capitalone.net> domain is identical to the CAPITAL ONE mark but for the removal of the space and the addition of the generic top-level domain…”.net.” These changes do not distinguish the domain name from Complainant’s mark.”); see also Wells Fargo & Company v. Pinnacle Management Group, Inc., FA1272346 (Nat. Arb. Forum August 18, 2009) (The addition of the terms “merchant services” which relate to Complainant’s business, does not distinguish the disputed domain name from Complainant’s mark. Moreover, the addition of the generic top-level domain (gTLD”) “.com” also does not sufficiently distinguish the disputed domain name from Complainant’s mark as a top-level domain is a required element of all Internet domain names.); see Gillette Co. v. RFK Assocs., FA 1492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Capital One Financial Corp. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 1487712 (Nat. Arb. Forum April 8, 2013) (finding that the addition of the term “creditcard,” and the top-level domain “.com” are insufficient to distinguish the respondent’s <capitalonecreditcard.com> domain from Complainant’s CAPITAL ONE mark). UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
[b.] The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject to this Complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Complainant has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant. Such evidence is sufficient to establish a respondent’s lack of rights to the disputed domain name. See Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (March 25, 2014) (finding that “there is no basis in the record for a finding that Respondent is known by the disputed domain name under Policy ¶4(c)(ii)” since “[t]he WHOIS information lists ‘Ryan G Foo’ of ‘PPA Media Services’ as the registrant of record.”); see also Capital One Financial Corp. v. CW Inc., FA 1527001 (Nat. Arb. Forum November 25, 2013) (concluding that “Respondent is not commonly known by the <capitalonerewards.com> domain name” and finding that “there is no evidence that tends to prove that, notwithstanding the WHOIS record, Respondent is otherwise commonly known by the at-issue domain name”); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006 (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see Capital One Financial Corp. v. PPA Media Services / Ryan G. Foo, FA 485206 (Nat. Arb. Forum April 1, 2013) (concluding that “Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the contemplation of Policy ¶4(c)(ii).”) ; see also Capital One Financial Corp. v. MGA Enterprises Ltd., FA 467312 (Nat. Arb. Forum December 10, 2012) (finding that “the WHOIS information for the contested domain name identifies the registrant only as ‘mga enterprises limited,’ which does not resemble the domain name.” And concluding that “Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in it under Policy ¶4(c)(ii).”).
Respondent’s lack of rights or legitimate interests in the disputed domain name is further evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name <capitalonebnk.com> houses a website displaying a search engine, “related links” and “sponsored listings.” Specifically, Respondent’s website provides links to other financial institutions, such as Visa, Master Card, American Express, Wells Fargo, and CitiBank, including some of Complainant’s competitors. One reaches these pages by simply typing in the name of one of Complainant’s competitors in the search engine, or by clicking on any of the “related links” or “sponsored listings” depicted on the page. Such actions are sufficient to establish that Respondent’s actions are not in connection with a bona fide offering of goods or services. See Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (Nat. Arb. Forum March 25, 2014) (finding that “Respondent’s use of the domain name to host competing and related hyperlinks 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.”); see also Capital One Financial Corp. v. CW Inc., FA 1527001 (Nat. Arb. Forum November 25, 2013) (finding that Respondent’s use of the domain name to provide “links to other financial institutions, some of which may compete with Complainant” is neither a “bona fide offering of goods or services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.”); see also Capital One Financial Corp. v. Bin G Glu / G Design, FA 1542631 (March 20, 2014) (finding that “Respondent has no rights to or legitimate interests in the disputed domain name…” and that “Respondent is not using the <capiitalone.com> domain name in connection with a Policy ¶4(c)(i) bona fide offering of goods or services or a Policy ¶4(c)(iii) legitimate noncommercial or fair use.”); see also Expedia, Inc. v. Compaid, FA520654 (Nat. Arb. Forum August 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) nor a legitimate noncommercial use or fair use pursuant to Policy¶4(c)(iii)); see Capital One Financial Corp. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 487712 (Nat. Arb. Forum April 8, 2013) (finding that Respondent’s use of the <capitalonecreditcard.com> domain name to present site visitors with a variety of links to third parties “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.”); see Capital One Financial Corp. v. DCH, FA 487835 (Nat. Arb. Forum April 9, 2013) (finding that the use of “a disputed domain name solely to display competing hyperlinks does not demonstrate a bona fide offering or a legitimate noncommercial or fair use.”).
[c.] The disputed domain name should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to directory websites and a commercial search engine that displays third-party links to Complainant’s competitors. Respondent’s disputed domain name <capitalonebnk.com> houses a website with a search engine and directory. Specifically, Respondent’s website provides links to other financial institutions, such as Visa, American Express, Wells Fargo, and CitiBank, including some of Complainant’s competitors. One reaches these pages by simply typing in the name of one of Complainant’s competitors in the search engine, or by clicking on any of the links or sponsored advertisements depicted on the page. This use results in a disruption of Complainant’s business and intentionally attracts Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent is benefiting from the valuable goodwill that Complainant has established in its mark and such actions are sufficient to establish the bad faith requirement. See Capital One Financial Corp. v. CW Inc., FA 1527001 (Nat. Arb. Forum November 25, 2013) (finding that “since the domain name addresses a website offering links to Complainant’s competitors and since it appears that Respondent intends to profit from the good faith associated with Complainant’s mark, the relevant circumstances indicate that Respondent is attempting to attract, for commercial gain, Internet users to the <capitalonerewards.com> website by creating a likelihood of confusion between Complainant’s CAPITAL ONE mark and the at-issue domain name.”); see also Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (Nat. Arb. Forum March 25, 2014) (finding that “Respondent acted in bad faith under Policy ¶4(b)(iii)” and that “Respondent demonstrates bad faith commercial disruption as Respondent uses the disputed domain name for hyperlinks to services competing with those offered under Complaint’s CAPITAL ONE mark.”); see also 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 products of the complainant and to complainant’s competitors, as well as diverting Internet users to several other domain names.); see also Capital One Financial Corp. v. MGA Enterprises Ltd., FA 467312 (Nat. Arb. Forum December 10, 2012) (finding that “Respondent’s use of the disputed domain name in the manner described in the Complaint disrupts Complainant’s business, and therefore demonstrates that Respondent both registered and uses the domain name in bad faith under Policy ¶4(b)(iii).”); see also Capital One Financial Corp. v. DCH, FA 487835 (Nat. Arb. Forum April 9, 2013) (finding that Respondent took advantage of Complainant’s goodwill “by using a confusingly similar domain name to divert consumers who are searching for Complainant but mistakenly come to Respondent’s site instead. Such diversionary tactics with competitive links are sufficient to prove bad faith attraction for commercial gain under Policy ¶4(b)(iv).”).
In addition, Respondent registered the domain name with a privacy service, further evidence that the domain was registered in bad faith. Capital One Financial Corp. v. DCH, FA 487835 (Nat. Arb. Forum April 9, 2013) (concluding that “the fact Respondent originally registered the domain name with a privacy service in a commercial context raises the rebuttable presumption of bad faith registration and use…That fact alone sufficiently demonstrates bad faith registration and use.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 claims it owns the CAPITAL ONE mark, used in connection with Complainant’s banking and financial services. Complainant registered the CAPITAL ONE mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 2,065,991 registered May 27, 1997). The registration of a mark with a governmental trademark authority is normally sufficient evidence of rights in that mark. At this stage, Complainant need only prove it has some rights in some jurisdiction at this point. Complainant need not prove it has superior rights to Respondent in Respondent’s own jurisdiction. See Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (Nat. Arb. Forum March 25, 2014) (finding that Complainant’s USPTO registration for the CAPITAL ONE mark satisfies the Policy ¶4(a)(i) rights requirement, regardless of where Respondent resides.”). Therefore, Complainant has rights in the CAPITAL ONE mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <capitalonebnk.com> domain name is confusingly similar to Complainant’s CAPITAL ONE BANK mark. Respondent merely misspells the BANK-portion of the mark by eliminating the letter “a.” Respondent also removes the spaces in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” Prior panels have continuously found that these variations are insufficient to differentiate a disputed domain name from a given mark and this Panel would agree. See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also Capital One 8 Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (Nat. Arb. Forum March 25, 2014) (finding that “Respondent’s <capitalone.net> domain is identical to the CAPITAL ONE mark but for the removal of the space and the addition of the generic top-level domain…”.net.” These changes do not distinguish the domain name from Complainant’s mark.”). Therefore, Respondent’s <capitalonebnk.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 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 it has 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 has no rights or legitimate interests in the <capitalonebnk.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). The WHOIS information for the disputed domain name does not reflect Respondent is commonly known by the disputed domain name. The WHOIS information currently lists “DN Manager” as registrant. Complainant never authorized Respondent to use its marks in any fashion. Based upon this information, Respondent is not commonly known by the disputed domain name. See Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (March 25, 2014) (finding that “there is no basis in the record for a finding that Respondent is known by the disputed domain name under Policy ¶4(c)(ii)” since “[t]he WHOIS information lists ‘Ryan G Foo’ of ‘PPA Media Services’ as the registrant of record.”).
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to provide links through an obvious parking page to other financial institutions including Complainant’s competitors. Respondent displays links such as “American Express Cards,” “American Credit Login,” and “Mastercard.” Using a confusingly similar domain name to display links in competition with the complainant’s services is not a use which falls within Policy ¶¶4(c)(i) and 4(c)(iii). See Capital One Financial Corp. v. CW Inc., FA 1527001 (Nat. Arb. Forum November 25, 2013) (finding that Respondent’s use of the domain name to provide “links to other financial institutions, some of which may compete with Complainant” is neither a “bona fide offering of goods or services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.”). Respondent’s use of the <capitalonebnk.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.
Respondent used a privacy service to register the disputed domain name. This means Respondent never publicly associated itself with the disputed domain name. Only the nominee, who has no right to control the use of the disputed domain name, is publicly associated with the disputed domain name. Therefore, Respondent has acquired no rights by being the beneficial owner of the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <capitalonebnk.com> domain name in bad faith. Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to competing financial websites. This type of use results in a disruption of complainant’s business. 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 products of the complainant and to complainant’s competitors, as well as diverting Internet users to several other domain names.). Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iii).
Respondent’s web site at the <capitalonebnk.com> domain name features links to competing third-party websites 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 <capitalonebnk.com> domain name. Respondent is presumably commercially benefiting from the valuable goodwill Complainant has established in its CAPITAL ONE marks. The Panel in Capital One Financial Corp. v. DCH, FA 487835 (Nat. Arb. Forum April 9, 2013) found respondent took advantage of complainant’s goodwill “by using a confusingly similar domain name to divert consumers who are searching for complainant but mistakenly come to respondent’s site instead. Such diversionary tactics with competitive links are sufficient to prove bad faith attraction for commercial gain under Policy ¶4(b)(iv).” Respondent’s use and registration of the <capitalonebnk.com> domain name amounts to bad faith pursuant to Policy ¶4(b)(iv).
Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith use and registration. Respondent has done nothing to rebut that presumption. This alone justifies a finding of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <capitalonebnk.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, November 24, 2014
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