Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd
Claim Number: FA1411001590064
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 <capitaloneapplication.com>, registered with Fabulous.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.
The Honourable Neil Anthony Brown QC 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 16, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <capitaloneapplication.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 November 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@capitaloneapplication.com. Also on November 17, 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 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant uses CAPITAL ONE to promote and market an array of financial and banking services to consumers. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,065,991, registered May 27, 1997). The <capitaloneapplication.com> domain name adds the term “application” to the mark along with the gTLD “.com.”
Respondent has no rights or legitimate interests in the <capitaloneapplication.com> domain name. Respondent is using a privacy service and thus there can be no basis for determining that it is actually known by the <capitaloneapplication.com> domain name. Respondent is using the domain name to promote competing offers such as “American Express” and other unrelated software downloads, and thus there is no bona fide offering surrounding these domain names.
Respondent registered and is using the <capitaloneapplication.com> domain name in bad faith. Respondent is disrupting Complainant’s business in Policy ¶ 4(b)(iii) bad faith. Further, Respondent is profiting from a Policy ¶ 4(b)(iv) likelihood of Internet users’ confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of financial and banking services to consumers.
2. Complainant uses the CAPITAL ONE trademark to promote and market an array of financial and banking services to consumers. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,065,991, registered May 27, 1997).
3. The <capitaloneapplication.com> domain name was registered July 10, 2005.
4. Respondent is using the domain name to promote competing offers such as “American Express” and other unrelated software downloads
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses CAPITAL ONE to promote and market an array of financial and banking services to consumers. The mark has been registered with the USPTO (e.g., Reg. No. 2,065,991, registered May 27, 1997). This Panel agrees that Complainant’s USPTO registration is good evidence of Policy ¶ 4(a)(i) rights in the mark. 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.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CAPITAL ONE mark. Complainant claims the domain name is confusingly similar to the mark in that the term “application” and the gTLD “.com” do little to distinguish the domain name from the CAPITAL ONE mark. The Panel agrees that generic terms and a gTLD are not meaningful additions to this mark sufficient to show that it is not identical or confusingly similar to the trademark. See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)). Accordingly, the Panel finds the <capitaloneapplication.com> domain name confusingly similar to the CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CAPITAL ONE mark and to use it in its domain name and has simply added the generic word “application” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to an application used by Complainant in its business;
(b) Respondent registered the disputed domain name on July 10, 2005.
(c) Respondent is using the domain name to promote competing offers such as “American Express” and other unrelated software downloads;
(d) Respondent registered and used the disputed domain name without the permission or authority of Complainant;
(e) Complainant argues that Respondent is using a privacy service and thus there can be no basis for determining that it is actually known by the <capitalonesmaster.com> domain name. The Panel acknowledges that the WHOIS record merely lists “DN Manager / Whois-Privacy.Net Ltd” as the registrant of record here. As such, the Panel agrees there is no basis for finding Respondent to be commonly known by this domain name under Policy ¶ 4(c)(ii). 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);
(f) Complainant goes on to argue that Respondent is using the domain name to promote competing offers to various software and credit card offers and thus there is no bona fide offering surrounding these domain names. The Panel notes how Exhibit C shows a website that includes links to software downloads, along with a search bar wherein users could elect to search for competing goods on their own volition. See Compl., at Attached Ex. C. Here the Panel finds that use of the domain name for a basic hyperlink-laden website is not a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of this domain name. 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”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent is disrupting Complainant’s business in Policy ¶ 4(b)(iii) bad faith. The Panel takes note of how the domain name leads to a website featuring credit card offers. See Compl., at Attached Ex. C. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel agreed that there was a bad faith disruption at work when the domain name was used to target the complainant’s exact business when promoting competing ads. Here the Panel finds Policy ¶ 4(b)(iii) bad faith because the domain name is featuring credit card offers sponsored by competitors.
Secondly, Complainant also argues that Respondent is profiting from a Policy ¶ 4(b)(iv) likelihood of Internet users’ confusion. The Panel agrees that the use of the domain name for the offer of hyperlinks to competitors, and various software downloads, shows how Respondent seeks to profit from a likelihood of 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.’”).
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and use of the disputed <hpenterprise.com> domain name using the CAPITAL ONE mark, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneapplication.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 17, 2014
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