Capital One Financial Corp. v. Domain Admin / E-Promote
Claim Number: FA1501001602631
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Domain Admin / E-Promote (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneinsurance.com>, registered with Name.com, Inc.
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 Forum electronically on January 30, 2015; the Forum received payment on January 30, 2015.
On January 30, 2015, Name.com, Inc. confirmed by e-mail to the Forum that the <capitaloneinsurance.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 February 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@capitaloneinsurance.com. Also on February 2, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 CAPITALONE.COM mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,075,171, registered July 1, 1997). Complainant uses the CAPITALONE.COM mark in connection with its banking, credit card, and financial services. The <capitaloneinsurance.com> domain name is confusingly similar to the CAPITALONE.COM mark. The domain name incorporates the mark in full and adds the generic term “insurance.”
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 information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant has never authorized Respondent to use the CAPITALONE.COM mark. Respondent’s lack of rights or legitimate interests in the <capitaloneinsurance.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 or 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 <capitaloneinsurance.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 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 <capitaloneinsurance.com> domain name is confusingly similar to Complainant’s CAPITALONE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <capitaloneinsurance.com> domain name.
3. Respondent registered or used the <capitaloneinsurance.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 CAPITALONE.COM mark through registration with the USPTO (e.g., Reg. No. 2,075,171, registered July 1, 1997). Complainant uses the CAPITALONE.COM mark in connection with its banking, credit card, and financial services. The Panel concludes that Complainant’s valid registration of the CAPTIALONE.COM mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims the <capitaloneinsurance.com> domain name is confusingly similar to the CAPITALONE.COM mark. The domain name incorporates the mark in full and adds the generic term “insurance.” Previous panels have found that a mere addition of a generic term does little to distinguish the disputed domain name from the registered mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). This Panel determines that the disputed domain name is confusingly similar 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 argues 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 the WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant has never authorized Respondent to use the CAPITALONE.COM mark. The Panel agrees that this contention is sufficient to establish Respondent’s lack of rights to the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the <capitaloneinsurance.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 or noncommercial or fair use. Complainant alleges Respondent’s disputed domain name redirects Internet users to a website featuring a search engine and “related links.” The Panel notes that Complainant has provided a screenshot of the home page, where the related links can be located by Internet users. See Compl., at Attached Ex. C. Specifically, Respondent’s website provides links to other financial institutions, some of which are Complainant’s competitors, including “Chase Credit Cards” and “Local Chase.” See Compl., at Attached Ex. D. Internet users reach these pages simply by clicking on any of the “related links” offered on the page. Such actions are sufficient to establish that Respondent’s website is not operated in connection with a bona fide offering of goods or services. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Lacking a bona fide offering of goods or services, the Panel finds that Respondent has no rights or legitimate interest in respect of the domain name in dispute under Policy ¶ 4(c)(i). Further, the Panel agrees that as Respondent’s offerings are commercial hyperlinks, there can logically be no “noncommercial or fair use” under Policy ¶ 4(c)(iii).
Complainant contends Respondent has engaged in bad faith registration and use of the <capitaloneinsurance.com> domain name and alleges Respondent has registered the domain name primarily for the purpose of disrupting Complainant’s business. Accordingly, Complainant argues 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. By offering links to other financial institutions, Complainant argues Respondent has engaged in bad faith registration. 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)). This Panel finds bad faith registration under Policy ¶ 4(b)(iii).
Further, Complainant argues Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. The Panel again notes that the domain name resolves to a website that includes hyperlinks to third-party websites, including “Car Insurance UK,” “Chase,” and “Visa Credit Card.” See Compl., at Attached Ex. C. Complainant contends Respondent is benefitting from the valuable goodwill that Complainant has established in its mark and such actions are sufficient to establish the bad faith requirement. 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). This Panel agrees that the use as shown in Exhibit C illustrates that Respondent here seeks commercial gain through likelihood of confusion because competing hyperlinks have been found to be evidence of intent to generate revenue 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 <capitaloneinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 10, 2015
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