Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd
Claim Number: FA1504001615034
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is DN Manager / Whois-Privacy.Net Ltd (“Respondent”), Vanuatu.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneonebank.com>, registered with FABULOUS.COM PTY LTD..
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically April 17, 2015; the Forum received payment April 17, 2015.
On April 20, 2015, FABULOUS.COM PTY LTD. confirmed by e-mail to the Forum that the <capitaloneonebank.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and 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 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@capitaloneonebank.com. Also on April 23, 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 May 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 in this Proceeding:
1. Policy ¶ 4(a)(i)
a. Complainant has rights in the CAPITAL ONE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,992,626, registered August 13, 1996). Complainant also has rights in the CAPITAL ONE BANK mark through its registration with USPTO (Reg. No. 3,419,972 registered May 17, 2005).
b. Respondent’s <capitaloneonebank.com> domain name is identical or confusingly similar to Complainant’s CAPITAL ONE mark, because Respondent has simply attached the terms “one” and “bank”, which is descriptive of Complainant’s services.
2. Policy ¶ 4(a)(ii)
a. The WHOIS information for the disputed domain name lists “DN Manager” as Registrant. Further, Respondent is neither licensed nor authorized to use Complainant’s CAPITAL ONE mark.
b. Respondent lacks rights in the disputed domain name by failing to use it in connection with bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain provides links to competitors of Complainant.
3. Policy ¶ 4(a)(iii)
a. Respondent uses the disputed domain name to disrupt Complainant’s business.
b. Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain, by capitalizing on the likelihood of confusion as to its relationship with Complainant.
B. Respondent’s Contentions in this Proceeding:
Respondent did not submit a formal Response.
The Panel notes that Respondent’s disputed <capitaloneonebank.com> domain name was created November 27, 2006.
Complainant has rights and legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent has no such rights or legitimate interest in the mark or domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 and CAPITAL ONE BANK mark in connection with its business in banking and financial services. Complainant alleges that it has rights in the CAPITAL ONE mark through its registration with the USPTO (Reg. No. 1,992,626, registered August 13, 1996). Complainant also alleges it has rights in the CAPITAL ONE BANK mark through its registration with USPTO (Reg. No. 3,419,972 registered May 17, 2005). In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel found that, “a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i).” Prior panels have also found that a mark does not need to be registered in the country of Respondent’s residency. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Thus, this Panel finds that the Complainant’s USPTO registrations establish Complainant’s rights in the CAPITAL ONE and CAPITAL ONE BANK marks pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <capitaloneonebank.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark on the basis that the disputed domain name contains the entirety of the mark and is then differentiated only through the removal of spaces and the addition of the words “one” and “bank”, which is descriptive of Complainant’s services. Complainant argues that because the word ‘one’ is contained within the marks and the word “bank” directly relates to Complainant’s business, these words do not differentiate the disputed domain name from the CAPITAL ONE mark. In Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), the Panel found that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names,” thereby finding that “the disputed domain name [<americangenerallifeinsurance.com>] [was] confusingly similar to the complainant’s [AMERICAN GENERAL] mark.” Past Panels have also found that when a domain name contains the entirety of a Complainant’s mark, only adding a descriptive word the result is a confusingly similar domain name. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). As such, the Panel finds that Respondent’s <capitaloneonebank.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name using Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 alleges that Respondent has no rights or legitimate interests in the <capitaloneonebank.com> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. The Panel notes that that the WHOIS information indicates that “DN Manager” is the Registrant of the disputed domain name. The Panel notes that Respondent did not submit a Response to rebut any of Complainant’s contentions and the Panel finds that the Respondent is not commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name”).
Complainant alleges that Respondent is not using the disputed domain name to provide a bona fide offering of goods and services, or a legitimate noncommercial or fair use. Complainant urges that Respondent is using the <capitaloneonebank.com> domain name for the purpose of disrupting Complainant’s business by providing a search engine and directory that provides links to Complainant’s competitors. The Panel notes that some of the links resolve to businesses such as Visa, American Express, Chase and Bank of America. See Compl., at attached Ex. D. The Panel finds that such use establishes that Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant alleges that Respondent uses the <capitaloneonebank.com> domain name for the purposes of disrupting Complainant’s business by offering a directory and search engine that displays links to Complainant’s competitors. The Panel again notes that some of the competitors are businesses such as Bank of America, Visa, Chase and American Express. Complainant submitted Exhibit D to bolster this argument. Consequently, the Panel finds that, because of such use, Respondent is operating the disputed domain name in bad faith according to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”)
Complainant also urges that Respondent uses the disputed domain name to attract Internet users to its own website for its own commercial gain. Complainant believes that Respondent capitalizes on Internet users’ confusion as to its association with Complainant. Typically, panels have found such behavior to be indicative of bad faith under Policy ¶ 4(b)(iv). 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). As a result, the Panel finds further evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
This Panel also finds that given Respondent’s use of Complainant’s mark in the domain name, the well-known nature of the mark, and Respondent’s attempted use in the same area of commerce among Complainant’s competitors, that Respondent shows actual awareness of Complainant’s rights in the mark before registering and using the mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used Complainant’s protected mark in the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneonebank.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 4, 2015
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