Capital One Financial Corp. v. ravindra bala / sinetbiz.com
Claim Number: FA1412001592735
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is ravindra bala / sinetbiz.com (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonemail.com>, registered with GODADDY.COM, LLC.
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 December 1, 2014; the National Arbitration Forum received payment on December 1, 2014.
On December 2, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <capitalonemail.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 December 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@capitalonemail.com. Also on December 3, 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.
On December 4, 2014, the Forum received correspondence from Respondent which was not a proper Response to the Complaint.
Having received no proper Response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 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 market its financial and banking services. The CAPITAL ONE mark is duly registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,442,400, registered June 3, 2008). The <capitalonemail.com> domain name is confusingly similar to the CAPITAL ONE mark in that it adds the generic term “mail” and the gTLD “.com” to the mark and nothing more.
Respondent has no rights or legitimate interests in the <capitalonemail.com> domain name. The registrant of record for the <capitalonemail.com> domain name is “ravindra bala”. Further, the domain name has no active use beyond a statement that the domain name is available for sale.
Respondent has registered and is using the <capitalonemail.com> domain name in bad faith. The failure to make an active use of this Internet domain name suggests bad faith.
Respondent
Respondent did not submit a Response in this proceeding.
Preliminary Issue: Consent to Transfer
On December 4, 2014, the National Arbitration Forum received an e-mail submitted from Respondent, which is identified in this proceeding as “Correspondence – Respondent.” In this document, Respondent states he is willing to surrender the <capitalonemail.com> domain name. However, since there has been no request to withdraw the complaint pursuant to the National Arbitration Forum Supplemental Rule 12 (b), the Panel will issue a decision.
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 market its financial and banking services. Complainant contends that the CAPITAL ONE mark is duly registered with the USPTO (e.g., Reg. No. 3,442,400, registered June 3, 2008). The Panel finds this registration with the USPTO is sufficient to establish Complainant’s Policy ¶ 4(a)(i) rights in the CAPITAL ONE 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.”).
Complainant argues that the <capitalonemail.com> domain name is confusingly similar to the CAPITAL ONE mark in that it merely adds the generic term “mail” and the gTLD “.com” to the mark. The Panel agrees that the <capitalonemail.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark because the addition of the generic term “mail,” and the gTLD “.com,” are insufficient to differentiate the domain name from the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity 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 states that “ravindra bala” is listed as the registrant of record for the <capitalonemail.com> domain name. The Panel agrees that nothing in this record supports the position that Respondent is “commonly known” by the <capitalonemail.com> 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).
Complainant claims that the domain name has no active use beyond a statement that the domain name is available for sale. Complainant’s exhibits show that the domain name is being used to promote the sale of the domain name, directing bidders to “RAVI4321@aol.com.” The Panel agrees that the <capitalonemail.com> domain name is not associated with any bona fide offering or legitimate noncommercial or fair use because it is merely held out for sale. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant’s decision not to argue under Policy ¶ 4(b) is not detrimental when, as here, Complainant alleges bad faith under other basis. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that the failure to make an active use of this Internet domain name suggests bad faith. Respondent is using the domain name to promote the sale of the domain name. Since the domain name incorporates Complainant’s mark, the Panel finds the offer of sale is evidence of bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
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 <capitalonemail.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 31, 2014
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