Capital One Financial Corp. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1412001592737
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonesavings.org>, registered with Internet.bs Corp. (R1601-LROR).
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.
Paul M. DeCicco, 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 5, 2014, Internet.bs Corp. (R1601-LROR) confirmed by e-mail to the National Arbitration Forum that the <capitalonesavings.org> domain name is registered with Internet.bs Corp. (R1601-LROR) and that Respondent is the current registrant of the name. Internet.bs Corp. (R1601-LROR) has verified that Respondent is bound by the Internet.bs Corp. (R1601-LROR) 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 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@capitalonesavings.org. Also on December 5, 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 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant owns the CAPITAL ONE mark, which it has registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,065,991 registered May 27, 1997) as well as other registries worldwide.
Complainant uses the CAPITAL ONE mark in connection with financial products and services.
The <capitalonesavings.org> domain name is confusingly similar to the CAPITAL ONE mark. The disputed domain name contains Complainant’s mark in full, and merely adds the term “savings,” which is generic in nature. The addition of the generic top-level domain “.org” is irrelevant to the confusing similarity analysis.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never authorized Respondent to use the CAPITAL ONE mark, nor is Respondent commonly known by the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
Respondent is attempting to pass itself off as Complainant. The disputed domain name resolves to a webpage providing unverified information about Complainant and its services. The page also includes links to many of Complainant’s websites and may also promote links to Complainant’s competitors, from which Respondent receives some form of monetary gain through the promoted links.
Respondent has engaged in bad faith registration and use. Respondent is using the disputed domain name to pass itself off as Complainant. The domain name addresses a website purporting to be an official website of Complainant’s, relying on the CAPITAL ONE mark, as well as information relating to Complainant. This use results in a disruption of Complainant’s business through user confusion, and therefore warrants a finding under Policy ¶ 4(b)(iii). Further, as Respondent presumably receives some form of monetary gain through the promoted links at the disputed landing page, Respondent is in violation of Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the CAPITAL ONE mark.
Respondent registered the at-issue domain name after Complainant acquired rights in CAPITAL ONE.
Respondent uses the domain name to pass itself off as Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its CAPITAL ONE mark with the USPTO, and numerous other recognized registries worldwide, establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). Such is true regardless of whether or not Respondent operates within the jurisdiction the trademark’s registry. 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.”); see also Capital One Financial Corp. v. Paydayloanz.com, FA1463493 (Nat. Arb. Forum October 22, 2012) (concluding that Complainant has “secured rights in its CAPITAL ONE mark through its various global trademark registrations.”)
In forming the at-issue domain name Respondent adds the descriptive term “savings” to Complainant’s CAPITAL ONE trademark less its space and then appends the top-level domain name “.org” to the resulting string. These alterations are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. The inclusion of the term “saving” adds to any confusion since it is suggestive of activity related to the scope of the CAPITAL ONE mark. Therefore, the Panel finds that the <capitalonesavings.org> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. See Warner Bros. Entm’t Inc.; New Line Prods., Inc. & DC Comics v. Procount Bus. Servs., FA 360942 (Nat. Arb. Forum Dec. 22, 2004) (finding that the addition of one or more generic terms and a gTLD as well as the omission of spaces fails to create a meaningful distinction between the disputed domain name and the mark within it because “[s]uch additions do not disguise the fact that the dominant features of the domain names are [c]omplainant’s marks, and each domain name is therefore confusingly similar to the marks pursuant to Policy ¶ 4(a)(i)”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for <capitalonesavings.org> lists “Domain Admin / Whois Privacy Corp.” as the domain name owner and there is nothing in the record that otherwise indicates that Respondent is known by the <capitalonesavings.org> domain name. Given the foregoing the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Furthermore, webpages addressed by the at-issue domain name include links to many of Complainant’s websites, from which Respondent receives some form of monetary gain through the promoted links. Notably included are links such as: “Capital One® Credit Cards,” “Get a Free Credit Score, No Credit Card Required,” and “Capital One Savings.” Respondent’s use of the domain name in connection with a click-through website 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 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).”).
Additionally, Respondent appears to be attempting to pass itself off as Complainant. Webpages addressed by the at-issue domain name provide unverified information about Complainant and its services and display Complainant’s trademark. Using the at-issue domain name in this manner again shows that Respondent lacks rights and interest in respect of the <capitalonesavings.org> domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Given the foregoing Complainant satisfies its burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s use of the disputed domain name is disruptive of Complainant’s business offerings and therefore warrants a finding of bad faith under the Policy. As mentioned above, the at-issue domain name addresses webpages featuring the CAPITAL ONE mark, as well as information relating to Complainant and its competitors. Indeed, the domain name’s landing page includes a search bar whereby users may be directed to Complainant’s competitors. This use of the at-issue domain name disrupts Complainant’s financial business and demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). 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 the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
As also mentioned above, Respondent uses of the at-issue domain name to pass itself off as Complainant. Respondent’s <capitalonesavings.org> domain name addresses webpages purporting to be sponsored by or affiliated with Complainant by placing the CAPITAL ONE mark throughout such pages as well as by displaying or referencing information relating to Complainant. See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).Thereby, Respondent hopes to mislead Internet visitors for commercial gain by capitalizing on the goodwill associated with Complainant’s CAPITAL ONE mark. Again, some of the operative links appear to compete with Complainant’s financial services. Respondent’s effort to generate click-through revenue by reliance on the guise of Complainant’s sponsorship demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). 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)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names);
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonesavings.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 13, 2015
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