Capital One Financial Corp. v. Private Registration / WhoisGuardService.com
Claim Number: FA1505001620195
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneonelinebanking.com>, registered with Nanjing Imperiosus Technology Co. Ltd..
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 May 19, 2015; the Forum received payment on May 19, 2015.
On May 20, 2015, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the Forum that the <capitaloneonelinebanking.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. Ltd. 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 May 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@capitaloneonelinebanking.com. Also on May 20, 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 12, 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 has registered both the CAPITAL ONE mark (e.g., Reg. No. 3,442,400, filed Aug. 26, 2005, registered June 3, 2008), and the CAPITAL ONE BANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,419,972, filed May 17, 2005, registered April 29, 2008). Both marks are used on or in connection with the sale of banking and financial services. The <capitaloneonelinebanking.com> domain name is confusingly similar because it contains a common misspelling of Complainant’s marks and adds the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name is being used by Respondent in an attempt to pass itself off as Complainant.
3. Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business in bad faith and attempting to commercially profit from a likelihood of confusion.
B. Respondent’s Contentions
1. Respondent failed to submit a timely response.
1. Respondent’s <capitaloneonelinebanking.com> domain name is confusingly similar to Complainant’s CAPITAL ONE BANK mark.
2. Respondent does not have any rights or legitimate interests in the <capitaloneonelinebanking.com> domain name.
3. Respondent registered or used the <capitaloneonelinebanking.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 has registered both the CAPITAL ONE mark (e.g., Reg. No. 3,442,400, filed Aug. 26, 2005, registered June 3, 2008), and the CAPITAL ONE BANK mark with the USPTO (e.g., Reg. No. 3,419,972, filed May 17, 2005, registered April 29, 2008). Both marks are used on or in connection with the sale of banking and financial services. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. 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.”). The Panel also notes that the relevant date of rights in a registered mark is the date the application for said mark was filed. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel also finds that Complainant does not need to register its mark in the country where Respondent is located. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <capitaloneonelinebanking.com> domain name is confusingly similar. Complainant argues that the domain name contains a common misspelling of Complainant’s marks and adds the generic top-level domain (“gTLD”) “.com.” As a general rule, a gTLD can never distinguish a domain name from the mark at issue. Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel notes that when Complainant argues for a common misspelling, they are referring to the added “e” in the “onelinebanking” portion of the disputed domain name, which presumably is meant to describe an online banking function. The Panel further notes that this portion of the domain name is not contained in either of the marks Complainant asserts, nor any of the marks listed in the complaint. See Compl., at p. 3-6. However, the Panel also infers that this portion of the domain name contains generic and/or descriptive terms, and where a domain name has been said to contain generic or descriptive terms, prior panels have established a confusing similarity. 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); see also 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). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark 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 asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use Complainant’s mark in domain names. The Panel notes that “Private Registration” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is void of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant argues that Respondent is attempting to pass itself off as Complainant. The Panel notes that Complainant has attached a screenshot of the resolving webpage that displays a message prompting Internet users to fill out a survey with regard to their experience with Capital One “in exchange for valuable consumer data.” Prior panels have found that an attempt by a respondent to pass itself off as the complainant cannot amount to rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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)). The Panel finds that Respondent is trying to pass itself off as Complainant, and declines to award Respondent rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. Specifically, Complainant believes that Respondent’s display of the CAPITAL ONE mark on the resolving webpage is an attempt by Respondent to pass itself off as Complainant, and that this use is disruptive. The Panel again notes that Complainant has attached a screenshot of the resolving webpage that displays a message prompting Internet users to fill out a survey with regard to their experience with Capital One “in exchange for valuable consumer data.” While prior panels have not found passing off attempts to amount to Policy ¶ 4(b)(iii) bad faith, they have found them to amount to generic bad faith under Policy ¶ 4(a)(iii). See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel finds that Respondent is trying to pass itself off as Complainant, and it finds bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes a likelihood of confusion exists and that Complainant is trying to commercially profit in the process. Complainant argues that the resolving webpage contains various third party links, some of which lead to Complainant’s competitors. The Panel notes that the evidence presented by Complainant does not show such links to appear on the resolving webpage. The Panel feels that a likelihood of confusion exists, and that Respondent is commercially benefitting in the process, and it finds Policy ¶ 4(b)(iv) bad faith. 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneonelinebanking.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 19, 2015
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