Capital One Financial Corp. v. Russ Palermo
Claim Number: FA1501001602632
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia. Respondent is Russ Palermo (“Respondent”), Indiana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonepay.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2015; the Forum received payment on January 30, 2015.
On February 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitalonepay.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 February 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@capitalonepay.com. Also on February 4, 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 27, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
1. Complainant owns the capital one mark in numerous versions through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,442,400, registered June 3, 2008). Complainant offers financial products and services to consumers, small businesses, and commercial clients and uses the CAPITAL ONE mark to promote its goods and services. The <capitalonepay.com> domain name is confusingly similar to the CAPITAL ONE mark. The domain name contains Complainant’s mark in full and simply adds the generic term “pay.” Respondent also attaches the generic top-level domain “.com” to the domain name.
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 CAPITAL ONE trademark, nor use the mark as a domain name. Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website with no content, merely a statement noting “Website Coming Soon!”
3. Respondent has engaged in bad faith registration and use of the <capitalonepay.com> domain name. Respondent uses the disputed domain to resolve to a blank or inactive page. Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Capital One Financial Corp. of Richmond, VA, USA. Complainant owns numerous domestic and international registrations for the mark capital one and related marks which it has used continuously since at least as early as 1996 in connection with its provision of financial products and services.
Respondent is Russ Palermo of Indianapolis, IN, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that this <capitalonepay.com> domain name was registered on or about Sept. 9, 2014.
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 mark in numerous versions through the USPTO (e.g., Reg. No. 3,442,400, registered June 3, 2008). Complainant offers financial products and services to consumers, small businesses, and commercial clients and uses the CAPITAL ONE mark to promote its goods and services. The Panel finds that Complainant’s valid registration of the CAPITAL ONE mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts the <capitalonepay.com> domain name is confusingly similar to the CAPITAL ONE mark. The domain name contains Complainant’s mark in full and simply adds the generic term “pay,” which directly relates to Complainant’s business. Respondent also attaches the generic top-level domain “.com” to the domain name. Prior panels have found that adding a generic term does little to remove confusing similarity from disputed mark, particularly when it relates to a complainant’s business. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Further, previous panels have held that an addition of a gTLD does not serve to adequately distinguish the disputed domain name from the registered mark. See OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). The Panel here finds that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant argues 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 reflects that registrant is known as Russ Palermo. Further, Complainant has never authorized Respondent to use the CAPITAL ONE trademark, nor use the mark as a domain name and Respondent has provided no answer in response to Complainant’s assertions. The Panel finds these facts are 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 Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website with no content, merely a statement noting “Website Coming Soon!” Complainant asserts that Respondent’s failure to use the domain name is not a bona fide offering of goods or services under Policy ¶4 (c)(i). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out). The Panel here finds Respondent’s failure to demonstrate a preparation to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, further supports the conclusion that Respondent has not established rights or legitimate interests in respect of the domain name pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by allegations considered under the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant asserts Respondent has engaged in bad faith registration and use of the <capitalonepay.com> domain name. Respondent uses the disputed domain to resolve to an inactive page featuring no content, and a statement noting “Website Coming Soon!”. Complainant asserts failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). As Respondent has failed to make an active use of the disputed domain name within several months after its registration, the Panel here finds bad faith registration and use under Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonepay.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 13, 2015
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