Capital One Financial Corp. v. Callum Macgregor / General Delivery
Claim Number: FA1505001620190
PARTIES
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary, Maynard, Virginia, USA. Respondent is Callum Macgregor / General Delivery (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capitalonebankusa.com>, <captailonecreditcard.com>, <caponecreditcard.com>, <caponevisa.com>, and <captialine.com> registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2015; the Forum received payment on May 19, 2015.
On May 26, 2015, Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com confirmed by e-mail to the Forum that the <capitalonebankusa.com>, <captailonecreditcard.com>, <caponecreditcard.com>, <caponevisa.com>, and <captialine.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com 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 June 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@capitalonebankusa.com, postmaster@captailonecreditcard.com, postmaster@caponecreditcard.com, postmaster@caponevisa.com, postmaster@captialine.com. Also on June 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 June 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
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 on August 13, 1996). Respondent’s domain names are confusingly similar to Complainant’s CAPITAL ONE mark, because the domain names are simple misspellings of Complainants mark with the addition of generic terms to some of the domain names.
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the disputed domain names as the WHOIS information lists “Callum Macgregor” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s CAPITAL ONE mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving website to host links to competitors of Complainant.
Policy ¶ 4(a)(iii)
Respondent registered and uses the disputed domain names for the purpose of disrupting Complainant’s business. Respondent uses the resolving websites to capitalize on the confusion of Internet users to profit commercially.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Capital One Financial Corp., 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 on August 13, 1996). Complainant uses the CAPITAL ONE mark in conjunction with its business as a financial institution.
Respondent, Callum Macgregor / General Delivery, registered the <capitalonebankusa.com> domain name on October 13, 2010; the <captailonecreditcard.com> domain name, on October 29, 2006; the <caponecreditcard.com> domain name, on November 23, 2010; the <caponevisa.com> domain name, on August 27, 2006; and the <captialine.com> domain name, on June 21, 2005. Respondent uses the resolving website to host links to competitors of Complainant.
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 has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i) through registration with the USPTO. 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)); see Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <capitalonebankusa.com>, <captailonecreditcard.com>, <caponecreditcard.com>, <caponevisa.com> and <captialine.com> domain names are confusingly similar to Complainant’s CAPITAL ONE mark. The <capitalonebankusa.com> domain name contains the CAPITAL ONE mark and is differentiated by only the removal of spaces, and the addition of the terms “bank” and “usa,” and the generic top-level domain (“gTLD”) “.com.” The <caponecreditcard.com> and <caponevisa.com> domain names are differentiated by only the removal of spaces and the letters “ital” as well as the addition of the terms “credit,” “card,” and “visa” and the gTLD “.com.” The <captialine.com> domain name is differentiated only in that it is a misspelling of CAPITAL ONE with the addition of the gTLD “.com.” The <captailonecreditcard.com> domain name is differentiated only in that it is a misspelling of CAPITAL ONE with the addition of the terms “credit” and “card” and the gTLD “.com.” The terms “bank,” “usa,” “credit,” “card,” and “visa” are all descriptive of Complainant’s business operations.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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).
Respondent is not commonly known as the disputed domain names under Policy ¶ 4(c)(ii). The WHOIS information lists “Callum Macgregor” as the registrant. Moreover, Respondent is not authorized to use Complainant’s mark. 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).
Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate and noncommercial fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). Respondent uses the resolving website to host competing links. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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)).
Responded registered and uses the <capitalonebankusa.com>, <captailonecreditcard.com>, <caponecreditcard.com>, <caponevisa.com> and <captialine.com> domain names for the purpose of disrupting Complainant’s business operations. Respondent uses the resolving website solely to redirect Internet users to competitors of Complainant. Such use constitutes disruption under Policy ¶ 4(b)(iii), thereby showing bad faith in use and 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)).
Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <capitalonebankusa.com>, <captailonecreditcard.com>, <caponecreditcard.com>, <caponevisa.com> and <captialine.com> domain names to confuse Internet users about the identity of Respondent. Respondent presumably receives click-thru fees from redirecting Internet users to competitors of Complainant. Such use constitutes bad faith registration and use 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); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonebankusa.com>, <captailonecreditcard.com>, <caponecreditcard.com>, <caponevisa.com>, <captialine.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 13, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page