Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy
Claim Number: FA1410001584216
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Above.com Domain Privacy / Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonesecuredmastercard.com>, registered with Above.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 10, 2014; the National Arbitration Forum received payment on October 10, 2014.
On October 14, 2014, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <capitalonesecuredmastercard.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.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 15, 2014, the Forum served the Complaint and all Annexes, includ-ing 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 enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@capitalonesecuredmastercard.com. Also on October 15, 2014, the Written Notice of the Complaint, notifying Re-spondent 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 Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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, founded in 1988, is a major financial institution which helped to pioneer the mass marketing of credit cards in the early 1990s.
Complainant has used the CAPITAL ONE trademark to promote its goods and services since its inception.
Complainant holds registrations for the CAPITAL ONE trademark, on file with the United States Patent and Trademark Office (“USPTO”), including Registry No. 3,442,400, registered June 3, 2008.
Respondent registered the <capitalonesecuredmastercard.com> domain name on January 19, 2011.
The domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
Respondent has not been commonly known by the domain name.
Complainant has never licensed or otherwise authorized Respondent’s use of the CAPITAL ONE mark.
Respondent has no rights to or legitimate interests in the domain name.
Respondent uses the domain name to profit from the promotion of hyperlinks to the websites of some of Complainant’s commercial competitors.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the CAPITAL ONE trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (finding that USPTO registration of a mark is sufficient to establish rights in it under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant has acquired rights in its mark by reason of its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Australia). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review
of the record that the <capitalonesecuredmastercard.com> domain name is con-fusingly similar to Complainant’s CAPITAL ONE trademark. The domain name contains the entire mark, with only the elimination of the space between its terms and the addition of a generic Top Level Domain (“gTLD”) and the words “secured mastercard,” which describe an aspect of Complainant’s business. These alter-ations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See HomeVest-ors of Amer., 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).
See also Eastman Chemical Co. v. Patel, FA 524752 (National Arb. Forum September 7, 2005):
[The] Panel concludes that the addition of a term descriptive of Complainant’s business, …, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name <capitalonesecuredmastercard.com>, and that Complainant has not licensed or otherwise authorized Respondent’s use of the CAPITAL ONE trademark. More-over, the pertinent WHOIS record identifies the registrant of the domain name only as “Above.com Domain Privacy,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <capitalonesecuredmastercard.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (finding that a respondent had no rights to or legitimate interests in a disputed domain name as provided in Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <capitalonesecuredmastercard.com> domain name to host hyperlinks to the websites of some of Complainant’s commercial competi-tors. In the circumstances here presented, we may comfortably presume that Respondent profits from this employment of the domain name. This use of the domain name is therefore neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Sav-chenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel there finding that there was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a contested domain name under Policy ¶ 4(c)(iii) where the domain name was used to profit by hosting competitive commercial hyperlinks.
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that, as alleged in the Complaint, Respond-ent uses the contested <capitalonesecuredmastercard.com> domain name to host links to the websites of Complainant’s commercial competitors. It is thus apparent that Respondent’s employment of the domain name disrupts Complain-ant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding, under Policy ¶ 4(b)(iii), that a respondent’s use of the website resolving from a disputed domain name to divert Internet users to the websites of a UDRP complainant’s compet-itors constituted disruption of that complainant’s business, and therefore as evidence of bad faith registration and use of the domain name).
We are also convinced by the evidence that Respondent’s use of the disputed <capitalonesecuredmastercard.com> domain name, which is confusingly similar to Complainant’s CAPITAL ONE trademark, to seek to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s assoc-iation with the domain name further demonstrates Respondent’s bad faith in the registration and use of the domain name. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … 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.’
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(c)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <capitalonesecuredmastercard.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 11, 2014
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