Capital One Financial Corp. v. Daniel Okpara / Greater Life Inc
Claim Number: FA1511001647378
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, United States. Respondent is Daniel Okpara / Greater Life Inc (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone-bank.com> ('the Domain Name'), registered with GoDaddy.com, LLC.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2015; the Forum received payment on November 17, 2015.
On November 18, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitalone-bank.com> 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 November 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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-bank.com. Also on November 18, 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 December 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
The Complainant's contentions can be summarised as follows:
The Complainant is a major financial institution founded in 1988 and has used its CAPITAL ONE and CAPITAL ONE BANK trade marks since inception.
Complainant owns registrations for CAPITAL ONE and CAPITAL ONE BANK in the USA and for CAPITAL ONE all over the world for banking and financial services.
The Domain Name is confusingly similar to the Complainant’s CAPITAL ONE and CAPITAL ONE BANK registered trade marks as the Domain Name simply adds a hyphen and/or the generic word 'bank' to those marks. Adding a dash and the gTLD .com to a mark are insufficient to distinguish the disputed domain name from that mark. The addition of a gTLD such as .com is a requirement of domain names.
The Respondent has no rights or legitimate interests in the Domain Name. He is not commonly known by it. Complainant has never authorised the Respondent to use the Complainant’s mark.
Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, nor a legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Domain Name has been registered and used in bad faith. It is being used to resolve to a blank page. Failure to actively use a domain name constitutes bad faith registration and use
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is a major financial institution founded in 1988 and has used its CAPITAL ONE and CAPITAL ONE BANK trade marks since inception. Complainant owns registrations for CAPITAL ONE and CAPITAL ONE BANK in the USA and for CAPITAL ONE all over the world for banking and financial services.
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.”).
The Domain Name consists of the Complainant's CAPITAL ONE registered trade mark, a hyphen, the generic term 'bank' and the gTLD .com.
Prior panels have found that adding generic terms does little to remove confusing similarity from a disputed mark. See Disney Enters. Inc v McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding disneyvacationvillas.com to be confusingly similar to the Complainant’s DISNEY mark because it incorporated the Complainant's mark in its entirety and merely added two terms to it.).
Previous panels have found evidence of confusing similarity under Policy 4 (a) (i) where a respondent’s domain name merely adds a hyphen to a complainant’s mark. See Sports Auth. Mich. NC. v Batu 5, FA 176541 (Nat. Arb. Forum Apr. 30, 2007)(‘The addition of a hyphen to Complainant’s mark does not create a distinct characteristic capable of overcoming a Policy 4 (a) (i) confusingly similar analysis’).
The gTLD .com does not serve to distinguish the Domain Name from the CAPITAL ONE mark, which is the distinctive component of the Domain Names. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights. This is compounded by the fact that the generic element of the Domain Name refers to services that the Complainant provides.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
The Respondent does not explain why they have registered a domain name consisting of the Complainant's CAPITAL ONE trade mark, a non-distinct punctuation mark (namely a hyphen) and the additional generic word 'bank' which describes the Complainant’s services.
The Respondent does not appear to have any trade marks associated with the name CAPITAL ONE . There is no evidence that they are commonly known by this name and they do not have any consent from the Complainant to use this name.
The Respondent does not appear to have used the Domain Name for any bona fide offering of services or for any use. See Hewlett Packard CO. v Shemesh, FA 434145 (Nat. Arb. Forum Apr 20, 200) ('The Panel finds that the [failure to make an active use] of a domain name is 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).
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
The Respondent has not responded and has given no satisfactory reason why it is entitled to register a domain name comprising the Complainant's trade mark CAPITAL ONE, a hyphen and the word 'bank' which refers to the services the Complainant provides.
Panels have historically found that there can be a finding of registration and use in bad faith where there is passive use of a well-known trade mark in a domain name where there is no response and no explanation as to why the use could be good faith. See the case of Telstra Corporation Limited v Nuclear Marshmellows, WIPO case no D2000-0003. See also DCI SA v Link Commercial Corp, D2000-1232 (WIPO Dec 7, 2000) (Concluding that the respondent's [failure to make an active use] of a domain name satisfies the requirements of 4(a) (iii) of the Policy) As such the Panel finds on the balance of probability that the Respondent registered and used the Domain Name in bad faith.
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-bank.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 16, 2015
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