Capital One Financial Corp. v. Frankie Ruiz
Claim Number: FA1412001595963
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Frankie Ruiz (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneorangebowl.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2014; the National Arbitration Forum received payment on December 18, 2014.
On December 19, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <capitaloneorangebowl.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 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2015 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@capitaloneorangebowl.com. Also on December 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 January 14, 2015, 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 uses CAPITAL ONE to identify its banking and financial services, and has registered the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,992,626, registered Aug. 13, 1996). Complainant has also registered CAPITAL ONE BOWL with the USPTO (Reg. No. 2,853,604, registered June 15, 2004). Complainant has registered numerous related trademarks worldwide.
Respondent uses the CAPITAL ONE BOWL mark in connection with its sponsorship of college football bowl championship games.
The <capitaloneorangebowl.com> domain name is confusingly similar to the CAPITAL ONE BOWL mark as the disputed domain name incorporates the mark in full and interjects the term “orange,” which evokes Complainant’s sponsorship efforts relating to college football bowl games.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <capitaloneorangebowl.com> name as demonstrated by the WHOIS record. Further, Respondent is not authorized to use the CAPITAL ONE mark in any fashion. Respondent’s lack of rights or legitimate interests is further demonstrated by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The disputed domain name instead resolves to a parked page featuring related links and a commercial search engine capable of promoting competitors of Complainant, including other financial institutions such as Visa, Chase, and MasterCard.
Respondent has engaged in bad faith registration and use of the <capitaloneorangebowl.com> domain name. Specifically, Respondent uses the disputed domain name in connection with a parked website featuring advertisements, a commercial search engine and links to Complainant’s competitors. As the commercial search engine can be used to access Complainant’s competitors, the disputed domain name disrupts Complainant’s offerings in violation of Policy ¶ 4(b)(iii). Further, as Respondent generates revenue through the website’s capacities, bad faith under Policy ¶ 4(b)(iv) is also at issue.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CAPITAL ONE and CAPITAL ONE BOWL marks through its registration of such marks with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the CAPITAL ONE and CAPITAL ONE BOWL trademarks.
Respondent uses the at-issue domain name to address a parking page that displays links to Complainant’s competitors and other third parties and contains a search engine feature.
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 is confusingly similar to a trademarks in which Complainant has rights.
Complainant establishes its rights in the CAPITAL ONE and CAPITAL ONE BOWL marks through its USPTO trademark registrations of such marks. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also 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.”).
Respondent’s CAPITAL ONE BOWL domain name incorporates Complainant’s CAPITAL ONE BOWL mark in full less its spaces, and inserts the term “orange.” The domain name is completed by appending a required top-level domain name, here “.com,” to the resulting string. The use of the term “orange” evokes Complainant’s sponsorship relating to college football bowl games as it names the iconic “Orange Bowl” football match. The differences between the at-issue domain name and Complainant’s trademark fail to distinguish the domain name from the mark for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <capitaloneorangebowl.com> domain name is confusingly similar to Complainant’s CAPITAL ONE BOWL trademark under Policy ¶ 4(a)(i). See Capital One Financial Corp. v. CW Inc., FA 1527001 (Nat. Arb. Forum November 25, 2013) (concluding that “the at-issue domain name is confusingly similar to Complainant’s CAPITAL ONE trademark” and that “the addition of ‘rewards’ to Complainant’s mark only serves to increase confusion between the domain name and the mark since the term suggests Complainant’s credit card business which may feature a rewards program.”); see also, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under 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 trademarks 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 the at-issue domain name lists “Frankie Ruizi” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <capitaloneorangebowl.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The at-issue domain name addresses a parked webpage displaying advertising, links and a commercial search engine capable of promoting Complainant’s competitors; such competitors including financial institutions such as Visa, Chase, and MasterCard. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (Nat. Arb. Forum March 25, 2014) (finding that “Respondent’s use of the domain name to host competing and related hyperlinks 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 also, Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Given the forgoing, Complainant satisfies its initial 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 compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned, Respondent uses the at-issue domain name in connection with a parked website featuring advertisements, a commercial search engine and links to Complainant’s competitors. The commercial search engine can be used to access Complainant’s competitors. Respondent’s use of the <capitaloneorangebowl.com> domain name thereby disrupts Complainant’s 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).
Furthermore, Respondent likely generates revenue through the at-issue website’s pay-per-click links and perhaps by other mechanisms after Internet users are directed to the website because of its confusingly similar domain name. Again as mentioned above, Respondent’s <capitaloneorangebowl.com> website promotes a commercial search engine and links such as “Capital One® Credit Cards,” “$3000 Credit Card Limit,” and “American Express® Cards,” Therefore, the Panel finds that Respondent is acting in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Respondent’s use of the <capitaloneorangebowl.com> domain name for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneorangebowl.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 27, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page