Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy
Claim Number: FA1501001598657
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia. Respondent is Above.com Domain Privacy / Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonebanl.com>, registered with Above.com Pty Ltd..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2015; the National Arbitration Forum received payment on January 7, 2015.
On January 13, 2015, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <capitalonebanl.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 January 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 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@capitalonebanl.com. Also on January 13, 2015, 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 February 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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’s Contentions
1. Complainant owns the CAPITAL ONE BANK mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,419,972, registered April 29, 2008). Complainant uses the CAPITAL ONE BANK mark in connection with its banking, credit card, and financial services. The <capitalonebanl.com> domain name is confusingly similar to the CAPITAL ONE BANK mark. The domain name incorporates the mark in full, misspells the word “bank” to read “banl,” and adds the gTLD “.com.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant has never authorized Respondent’s use of the CAPITAL ONE BANK trademark. Respondent’s lack of rights or legitimate interests in the <capitalonebanl.com> domain name is made evident 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. Respondent’s disputed domain name redirects Internet users to a website featuring a search engine and “related links.” See Compl., at Attached Ex. C.
3. Respondent has engaged in bad faith registration and use of the <capitalonebanl.com> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Respondent’s actions qualify as bad faith registration under Policy ¶ 4(a)(iii).
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <capitalonebanl.com> domain name is confusingly similar to Complainant’s CAPITAL ONE BANK mark.
2. Respondent does not have any rights or legitimate interests in the <capitalonebanl.com> domain name.
3. Respondent registered or used the <capitalonebanl.com> 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 owns the CAPITAL ONE BANK mark through registration with the USPTO. (e.g., Reg. No. 3,419,972, registered April 29, 2008). Complainant uses the CAPITAL ONE BANK mark in connection with its banking, credit card, and financial services. The Panel concludes that Complainant’s valid registration of the CAPITAL ONE BANK mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant claims the <capitalonebanl.com> domain name is confusingly similar to the CAPITAL ONE BANK mark. The domain name incorporates the mark in full, misspells the word “bank” to read “banl,” and adds the gTLD “.com.” Prior panels have found that misspelling the incorporated mark does not distinguish the disputed domain name from the complainant’s registered trademark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Further, merely adding a gTLD does not serve to adequately distinguish the disputed domain name from the registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This Panel determines that the disputed domain name is confusingly similar to Complainant’s registered mark under Policy ¶ 4(a)(i).
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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name, as evidenced in the WHOIS record for the disputed domain name. See Compl., at Attached Ex. B. The WHOIS information does not reflect that Respondent is commonly known by the disputed domain name and lists “Above.com Domain Privacy” as the registrant of record. Further, Complainant has never authorized Respondent to use the CAPITAL ONE BANK trademark. The Panel finds that these contentions sufficiently establish Respondent’s lack of association to this domain name vis-à-vis Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges Respondent’s lack of rights or legitimate interests in the <capitalonebanl.com> domain name is further evidenced 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. Respondent’s disputed domain name redirects Internet users to a website featuring a search engine and “related links.” See Compl., at Attached Ex. C. The Panel notes that Complainant has provided a screen capture of the home page, where the related links can be located by Internet users. Moreover, Respondent’s website provides links to other financial institutions, including some of Complainant’s competitors. See Compl., at Attached Ex. D. Internet users reach these pages simply by clicking on any of the “related links” shown on the page. Such actions are sufficient to establish that Respondent’s website is not operated in connection with bona fide offering of goods or services. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry). Additionally, the Panel agrees that since Respondent’s offerings are commercial hyperlinks, it logically follows that Respondent is not making a “noncommercial or fair use” of the disputed domain name under Policy ¶ 4(c)(iii). Demonstrating neither a bona fide offering of goods or services nor a “noncommercial or fair use” of the domain name in dispute, the Panel finds that Respondent has no rights or legitimate interest in the domain name under Policy ¶ 4(a)(ii).
Complainant contends Respondent has engaged in bad faith registration and use of the <capitalonebanl.com> domain name and alleges Respondent has registered the domain name primarily for the purpose of disrupting Complainant’s business. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. See Compl., at Attached Ex. C. Complainant argues Respondent has engaged in bad faith registration by offering links to other financial institutions. 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)). Accordingly, this Panel finds bad faith registration under Policy ¶ 4(b)(iii) because the competing hyperlinks disrupt Complainant’s business.
Additionally, Complainant argues Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Panel recalls that the domain name resolves to a website featuring hyperlinks to competitive websites. See Compl., at Attached Ex. D. Complainant contends Respondent is benefiting from the valuable goodwill that Complainant has established in its mark and such actions are sufficient to establish the bad faith requirement. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). This Panel agrees that Respondent’s use as shown in Exhibits C–D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under 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 <capitalonebanl.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 20, 2015
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