Capital One Financial Corp. v. john bernic
Claim Number: FA1503001612153
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is john bernic (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneny.us>, registered with eNom, 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2015; the Forum received payment on March 30, 2015.
On March 31, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <capitaloneny.us> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 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@capitaloneny.us. Also on April 1, 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 April 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant demonstratively uses the CAPITAL ONE trademark to identify the source of financial institution. This financial institution offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients. Complainant has registered CAPITAL ONE with the United States Patent and Trademark Office (“USPTO) (e.g., Reg. No. 3,989,909, registered July 5, 2011), which demonstrates its rights in the mark. Complainant offers detailed support of these contentions in Compl. at Exhibit A – D.
Complainant alleges that Respondent’s <capitaloneny.us> domain name is confusingly similar to the CAPITAL ONE mark as the domain name incorporates the mark in its entirety and merely adds the geographic descriptor “ny” and the “.us” country-code top-level domain (“ccTLD”).
Complainant further alleges that Respondent has no rights or legitimate interests in the <capitaloneny.us> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of CAPITAL ONE in a domain name. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactively held page displaying no content. See Compl., at Attached Ex. C.
Respondent registered or used the disputed domain name in bad faith. Respondent has failed to make an active use of the <capitaloneny.us> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on October 13, 2014.
As the Respondent has failed to file a Response in this matter, the Panel shall make its determinations based on the reasonable assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, the Respondent has no demonstrated rights or legitimate interests in or to the disputed domain name and that the Respondent registered or used the disputed 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 uses the CAPITAL ONE mark to identify its major financial institution that offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients. Complainant claims to have registered CAPITAL ONE with the United States Patent and Trademark Office (“USPTO) (e.g., Reg. No. 3,989,909, registered July 5, 2011), arguing such trademark registrations evince rights in the mark per a Policy ¶ 4(a)(i) analysis. USPTO registrations are sufficient in establishing rights under Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <capitaloneny.us> domain name is confusingly similar to the CAPITAL ONE mark as the domain name incorporates the mark in its entirety and merely adds the geographic descriptor “ny” and the “.us” country-code top-level domain (“ccTLD”). Such alterations to a mark is insufficient to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity).
Accordingly, the Panel finds that Respondent’s <capitaloneny.us> domain name is confusingly similar to the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <capitaloneny.us> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of CAPITAL ONE in a domain name. The relevant WHOIS information located at Complainant’s attached Exhibit B lists the registrant of record as “john bernic.” As Respondent has failed to submit a response, the Panel finds no basis in the available record to find Respondent as commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Further, Complainant contends that Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Instead, Complainant asserts that the disputed domain name resolves to an inactively held page displaying no content. See Compl., at Attached Ex. C. Respondent’s failure to make an active use of the <capitaloneny.us> domain name evinces no rights or legitimate interests in or to the disputed domain name.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith. A Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent has failed to make an active use of the <capitaloneny.us> domain name and, as such, has acted in bad faith. Complainant’s Exhibit C demonstrates the resolving page to the disputed domain name. That is, Respondent apparently uses the disputed domain name to resolve to inactive holding of the <capitaloneny.us> domain name. As there is no evidence in the record to refute this claim, it appears to provided evidence bad faith per Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
As such, under a totality of the circumstances, the Panel finds that Respondent has registered or used the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <capitaloneny.us> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: May 1, 2015
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