Capital One Financial Corp. v. Peter Keating
Claim Number: FA1509001639064
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Peter Keating (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone.money>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2015; the Forum received payment on September 23, 2015.
On September 23, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitalone.money> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@capitalone.money. Also on September 25, 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 October 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 name be transferred from Respondent to Complainant.
Complainant
Complainant has registered the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,442,400, registered June 3, 2008). The mark is used in connection with the sale of banking and financial services. The <capitalone.money> domain name is identical or confusingly similar to the CAPITAL ONE trademark because the domain name contains the entire mark and differs only by the addition of the descriptive generic top-level domain (“gTLD”) “.money.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, nor is Respondent a licensee of Complainant. Respondent is not using the domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent is not actively using the disputed domain name.
Respondent has engaged in bad faith registration and use because Respondent is failing to actively use the domain name.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <capitalone.money> domain name.
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 the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 3,442,400, registered June 3, 2008). The mark is used in connection with the sale of banking and financial services. The Panel finds that Complainant’s registration with the USPTO is sufficient to establish its rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i). 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.”).
Complainant argues that the <capitalone.money> domain name is identical or confusingly similar to the CAPITAL ONE mark. Complainant notes that the domain name contains the entire mark and differs only by the addition of the descriptive generic top-level domain (“gTLD”) “.money.” Past panels have found that gTLDs consisting of words that could be construed as descriptive terms may in fact enhance the confusing similarity between the domain name and the mark. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Other panels have founds that a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Citigroup Inc. v. Nicholas Bonner, FA 1604916 (Nat. Arb. Forum Mar. 18, 2015) (finding that the “.technology” gTLD was irrelevant to Policy ¶ 4(a)(i) analysis when assessing the confusing similarity between the <citigroup.technology> domain name and the CITIGROUP trademark). The Panel therefore finds that the <capitalone.money> domain name is identical or confusingly similar to the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 claims that Respondent is not commonly known by the <capitalone.money> domain name, nor is Respondent in possession of licensing rights that would allow it to use the CAPITAL ONE mark in domain names. The WHOIS lists “Peter Keating” as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain name or in possession of licensing rights. Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name 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 <capitalone.money> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent is not actively using the domain name. The domain name resolves to a webpage with a message reading, “Website coming soon!” Past panels have found that failure to use a domain name cannot vest rights or legitimate interests for that domain name in the respondent. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent has engaged in bad faith registration and use of the domain name. While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith, and Respondent’s bad faith may be demonstrated 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); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant claims that Respondent has displayed bad faith by failing to actively use the disputed domain name. The domain name resolves to a webpage with a message reading “Website coming soon!” Past panels have found bad faith where the respondent failed to actively use the domain name at issue. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). See generally Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). Therefore, the Panel finds Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
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 <capitalone.money> domain name be TRANSFERRED from Respondent to Complainant
__________________________________________________________________
Hon. Karl V. Fink (Ret), Panelist
Dated: October 26, 2015
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