Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy
Claim Number: FA1411001590061
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 <capitaloneoforex.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 known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2014; the National Arbitration Forum received payment on November 14, 2014.
On November 19, 2014, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <capitaloneoforex.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 November 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@capitaloneoforex.com. Also on November 19, 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 December 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses CAPITAL ONE to identify a broad range of financial, investment, insurance, and banking services. The mark has been registered with registrars around the world, especially the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,442,400, registered June 3, 2008). The <capitaloneoforex.com> domain name takes the entire mark, with a minor misspelling, and simply adds on the phrase “forex” which refers to a foreign currency exchange. The addition of “.com” should not be taken as a serious addition.
ii) Respondent has no rights or legitimate interests in holding the <capitaloneoforex.com> domain name. Respondent is not known by the <capitaloneoforex.com> domain name and there is no license or authority vested in Respondent that would give it the right to use the CAPITAL ONE mark in this manner. Respondent uses the domain name specifically for purposes of linking to other finance firms, including “Visa” or “MasterCard,” amongst others. See Compl., at Attached Ex. C.
iii) Respondent has registered and is using the <capitaloneoforex.com> domain name in bad faith. To start, Respondent is disrupting the CAPITAL ONE business by operating the website associated with the domain name. Further, Respondent is attempting to profit through the exploitation of likelihood for Internet user confusion.
B. Respondent
Respondent did not submit a response. The Panel notes that the <capitaloneoforex.com> domain name was registered April 19, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 uses CAPITAL ONE to identify a broad range of financial, investment, insurance, and banking services. The mark has been registered with registrars around the world, especially the USPTO (e.g., Reg. No. 3,442,400, registered June 3, 2008). The Panel agrees that this trademark’s registration with the USPTO stands as satisfactory evidence of Complainant’s Policy ¶ 4(a)(i) rights in the trademark. 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 goes on to argue that the <capitaloneoforex.com> domain name takes the entire mark, with a minor misspelling, and simply adds on the phrase “forex” which refers to a foreign currency exchange. Complainant also claims that the addition of “.com” should not be taken as a serious addition. This Panel agrees with Complainant that the domain name is confusingly similar to the CAPITAL ONE mark under Policy ¶ 4(a)(i) because the addition of a sector-specific business term and the gTLD amplify the confusing nature of the domain name, and the addition of a single stray letter does not alleviate the similarity. See, e.g., Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity).
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 argues that Respondent is not known by the <capitaloneoforex.com> domain name and there is no license or authority vested in Respondent that would give it the right to use the CAPITAL ONE mark in this manner. The Panel notes that “Above.com Domain Privacy” is listed as the registrant of record for this disputed domain name. As such, the Panel finds that there is simply no record to establish that Respondent is known by the domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant goes on to claim that Respondent uses the domain name specifically for purposes of linking to other finance firms, including “Visa” or “MasterCard,” amongst others. See Compl., at Attached Ex. C. As a result of the Panel’s examining Exhibit C, the Panel notes how the domain name does appear to be used for little more than the housing of generic and competing hyperlink advertising. Thus, the Panel concludes that Respondent has failed to make a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of this domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant claims that Respondent is disrupting the CAPITAL ONE business by operating the website associated with the domain name. The Panel notes Exhibit C, where it appears that various finance-related hyperlinks are being promoted. This Panel finds that these competing advertisements stand as evidence of Respondent’s Policy ¶ 4(b)(iii) disruption of Complainant’s business. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant goes on to argue that Respondent is attempting to profit through the exploitation of likelihood for Internet user confusion. The Panel takes note of Exhibit C’s competing hyperlinks and weighs as these links are also considered as evidence of an intent to profit from a likelihood of Internet user confusion in Policy ¶ 4(b)(iv) bad faith. 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.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneoforex.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 24, 2014
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