Capital One Financial Corp. v. Ronald D. Martinez / E-Capital One Traders
Claim Number: FA1507001628767
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Ronald D. Martinez / E-Capital One Traders (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecapitalonetraders.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 July 14, 2015; the Forum received payment July 14, 2015.
On July 15, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ecapitalonetraders.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@ecapitalonetraders.com. Also on July 15, 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 August 6, 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.
Complainant’s Contentions in this Proceeding:
Complainant is a major financial institution headquartered in McLean, Virginia. Complainant was founded in 1988 and helped pioneer the mass marketing of credit cards in the early 1990s. Complainant offers a broad spectrum of financial products and services to consumers, small businesses, and commercial clients. Complainant registered the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626, registered August 13, 1996), which demonstrates its rights in the mark. Complainant’s Attachment 1 to Exhibit A reviews Complainant’s trademark registrations with the USPTO. Respondent’s disputed domain name is confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and simply adds the letter “e” and the term “traders.” Further, Respondent merely adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark, although the WHOIS seems to denote Respondent as such. Second, Respondent has no authorization or license to use the CAPITAL ONE mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name and is not making a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass itself off as Complainant in an attempt to commercially gain. See Attached Exhibits C and E.
Respondent registered and used the disputed domain name in bad faith. First, Respondent used the disputed domain name to confuse Internet users by inducing them to believe the <ecapitalonetraders.com> domain name offers a variety of goods, including funding, thereby evidencing bad faith disruption under Policy ¶ 4(b)(iii) as such use competes with Complainant. Respondent is using the disputed domain name to intentionally confuse Internet users as to the nature of the website, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iv). Respondent uses Complainant’s mark and distinctive elements on the site resolving from the disputed domain name, exhibiting “passing off” behavior, which is an indication of bad faith under an analysis of Policy ¶ 4(a)(iii) as the Policy ¶ 4(b) elements are non-exclusive. Further, the “About Us” section of the disputed webpage is copied nearly word-for-word from Complainant’s official webpage. See Attached Exhibit D. Lastly, Respondent demonstrated actual and/or constructive knowledge of the CAPITAL ONE mark and Complainant’s rights in the mark pursuant to its use of the <ecapitalonetraders.com> domain name.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the disputed domain name August 23, 2014.
Complainant has well-established rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or disputed 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:
The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
Respondent has no rights or legitimate interests in respect of the domain name; and
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.”).
Identical or Confusingly Similar:
Complainant is a major financial institution headquartered in McLean, Virginia. Founded in 1988, Complainant helped pioneer the mass marketing of credit cards in the early 1990s. Complainant offers a broad spectrum of financial products and services to consumers, small businesses, and commercial clients. Complainant registered the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 1,992,626, registered August 13, 1996). Complainant contends that this USPTO registration demonstrates Complainant’s rights in the mark. The Panel finds that a trademark registration with the USPTO suffices to demonstrate a Complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant demonstrated its rights in the CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and simply adds the letter “e” and the term “traders.” The Panel notes that Respondent’s disputed domain name differs from Complainant’s mark by the addition of the gTLD “.com.” Past panels have found confusing similarity between a complainant’s mark and a respondent’s disputed domain name where the respondent added just one letter to the complainant’s mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Prior panels have also found confusing similarity where a respondent’s disputed domain name adds a descriptive word, one that directly relates to a complainant’s business, to a complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Finally, past panels have found that a respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly simliar 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 the disputed domain name to be confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and 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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no authorization or license to use the CAPITAL ONE mark. The Panel notes the WHOIS information merely lists “Ronald D. Martinez / E-Capital One Traders” as registrant and that Respondent failed to submit any evidence for the Panel’s consideration. While Respondent seems to be commonly known by the terms of the disputed domain name, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Complainant argues that Respondent makes a deliberate attempt to pass off his disputed domain name as an official Capital One website by using Complainant’s logo and copying Complainant’s “About Us” section and displaying it on the disputed webpage. See Compl., at Attached Ex. C-E (resolving page to disputed domain name; cease and desist letter; Complainant’s home site). Past panels have concluded that a respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use where the respondent intentionally attempts to pass itself off as the complainant by using the complainant’s logo and its content on the disputed webpage. 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with 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).
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:
First, Complainant argues that Respondent registered and used the disputed domain name in bad faith by offering competing services at its resolving site. The Panel compares Complainant’s Attached Exhibit C, which seems to demonstrate Respondent’s use of the resolving website, with Attached Exhibit E, which demonstrates Complainant’s home site and financial service offerings. Complainant’s allegations have a factual foundation and this Panel finds Respondent disrupted the business of Complainant in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent engaged in bad faith use and registration of the disputed domain name pursuant to Policy ¶ 4(b)(iv). Specifically, Complainant contends that Respondent is using the disputed domain name to intentionally confuse Internet users as to the nature of the website by using Complainant’s mark on the site resolving from the disputed domain name to commercially gain from competing services. The Panel is directed to Attached Exhibit C. Past panels have found bad faith where a respondent used a confusingly similar domain name to commercially profit. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). As such, the Panel finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent engaged in “passing off” behavior through its registration and subsequent use of the disputed domain name by incorporating similar thematic elements and/or color schemes Complainant used on its own web site to promote its legitimate business. Compare Compl., at Attached Ex. D (Respondent’s disputed domain name – resolving website’s “About Us” information), with Compl., at Attached Ex. E (Complainant’s corporate home web site information). The Panel sees distinct similarities between Complainant’s web site and Respondent’s web site and therefore determine that a “passing off” argument and finds it to be valid. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Therefore, this Panel finds Respondent’s alleged misleading use as sufficient evidence of bad faith under a non-exclusivity analysis of Policy ¶ 4(a)(iii).
Lastly, Complainant seems to assert that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the CAPITAL ONE mark when Respondent registered the disputed domain name. Complainant further argues that the advertisements for financial services, which are the same types of services offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge will not support findings of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and finds that Respondent registered the <ecapitalonetraders.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used 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 <ecapitalonetraders.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 20, 2015
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