Capital One Financial Corp. v. YUWEI CHEN / WinWant Holding Enterprise Co., Ltd.
Claim Number: FA1602001659662
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is YUWEI CHEN / WinWant Holding Enterprise Co., Ltd. (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <asiacapitalone.com>, registered with Net-Chinese Co., Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2016; the Forum received payment on February 5, 2016. The Complaint was received in both Chinese and English.
On February 08, 2016, Net-Chinese Co., Ltd. confirmed by e-mail to the Forum that the <asiacapitalone.com> domain name is registered with Net-Chinese Co., Ltd. and that Respondent is the current registrant of the names. Net-Chinese Co., Ltd. has verified that Respondent is bound by the Net-Chinese 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 February 11, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 2, 2016 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@asiacapitalone.com. Also on February 11, 2016, the Chinese language 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 March 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant uses the CAPITAL ONE mark in connection with its business selling financial products and services as a major financial institution. Complainant has 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 rights in the mark. Respondent’s <asiacapitalone.com> domain name is confusingly similar to the CAPITAL ONE mark as it incorporates the mark in its entirety while adding the geographic term “asia” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <asiacapitalone.com> domain name. Respondent is not commonly known by the domain name. Further, Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the domain name. Rather, the domain name resolves to a website that Respondent is attempting to pass off as Complainant’s own site in order to sell competing goods and services.
Respondent has registered and used the <asiacapitalone.com> domain name in bad faith. Respondent’s use of the website serves as a disruption of Complainant’s legitimate business purposes by diverting Complainant’s clients to Respondent’s site, which offers competing goods and services. Further, Respondent passes itself off as Complainant to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website to commercially gain in violation of Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Capital One Financial Corp. of Richmond VA, USA. Complainant owns numerous domestic and international registrations for the mark CAPITAL ONE and related marks comprising the family of CAPITAL ONE marks. Complainant has continuously used its marks, since at least its 1996 USA registration, in connection with the provision of a broad spectrum of banking and financial services.
Respondent is YUWEI CHEN / WinWant Holding Enterprise Co., Ltd. of New Taipei City, Taiwan. Respondent’s registrar’s address is listed as Taipei City, Taiwan. The Panel notes that the <asiacapitalone.com> domain name was registered on or about November 11, 2013.
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(f), 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.”).
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant uses the CAPITAL ONE mark in connection with its business selling financial products and services as a major financial institution. Complainant registered the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 1,992,626, registered August 13, 1996), which Complainant contends demonstrates rights in the mark, even where Respondent operates in a different country. Prior panels have found that a complainant’s valid USPTO registration is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel here finds that Complainant has established rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <asiacapitalone.com> domain name is confusingly similar to the CAPITAL ONE mark as it incorporates the mark in its entirety while adding the geographic term “asia” and the generic top-level domain “gTLD” “.com.” Previous panels have found similar alterations to a mark to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel here finds that Respondent’s <asiacapitalone.com> domain name is confusingly similar to the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <asiacapitalone.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information regarding the domain name lists “YUWEI CHEN” as registrant. Complainant also asserts that it has not given Respondent permission to use its CAPITAL ONE mark. Based on the Complainant’s claims, the WHOIS information, and the Respondent’s failure to provide any evidence, the Panel finds that there is no basis to support a conclusion that Respondent is commonly known by the disputed domain name. 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 is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <asiacapitalone.com> domain name. Complainant contends that the domain name resolves to a website that hosts competing financial services to those of Complainant’s, which Complainant gleans are for Respondent’s financial gain. Complainant further contends that Respondent is attempting to pass off its website as belonging to Complainant through use of Complainant’s logos on the site and a similar color scheme. Past Panels have found a respondent’s use of a complainant’s mark to pass itself off as a complainant to not be a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel here finds that Respondent has no rights under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s use of the <asiacapitalone.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because the domain offers competing products and services under the confusingly similar mark. Previous panels have found that a respondent’s diversion of a complainant’s customers to respondent’s competing business is evidence of bad faith registration and use 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. This Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent’s behavior supports a finding of bad faith under Policy ¶ 4(b)(iii).
Complainant additionally asserts that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant contends that Respondent’s site is deliberately misleading consumers into believing the site belongs to Complainant by using Complainant’s mark and stylized logo in many locations throughout the site, including the title on the homepage of the website. Complainant contends that Respondent is benefiting from attracting Complainant’s customers by selling a variety of goods and services on its website, including funding. The Panel finds that Internet user confusion that results in the redirection of consumers to Respondent’s site, which sells services similar to those of Complainant, constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel here finds that Respondent has registered and is using the disputed domain name in bad faith.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <asiacapitalone.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 24, 2016
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