Capital One Financial Corp. v. Above.com Domain Privacy
Claim Number: FA1608001687642
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caapitalonebank.com>, <capitalonabank.com>, <capatalonebank.com>, <capitalionebank.com>, <cpaitalonebank.com>, registered with Above.com Pty 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2016; the Forum received payment on August 10, 2016.
On Aug 16, 2016, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <caapitalonebank.com>, <capitalonabank.com>, <capatalonebank.com>, <capitalionebank.com>, and <cpaitalonebank.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty 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 August 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@caapitalonebank.com, postmaster@capitalonabank.com, postmaster@capatalonebank.com, postmaster@capitalionebank.com, and postmaster@cpaitalonebank.com. Also on August 16, 2016, 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 September 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Capital One Financial Corp., is a major financial institution founded in 1988 and helped pioneer the mass marketing of credit cards. Complainant has registered CAPITAL ONE with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626, registered Aug. 13, 1996), which demonstrates its rights in the mark. Respondent’s disputed domains are confusingly similar to the CAPITAL ONE mark as the domains are mere misspellings of the mark.
Respondent should be considered as having no rights or legitimate interests in the domain names. Respondent is not commonly known by the disputed domain, has not been licensed to use the mark by Complainant, nor authorized to use the mark in any manner. Further, Respondent’s use of the <caapitalonebank.com>, <capitalonabank.com>, <capitalionebank.com>, and <cpaitalonebank.com>, domains to resolve to websites hosting parked webpages and commercial advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s use of the <capatalonebank.com> domain to resolve to a website hosting malware also is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent’s domains should be considered as having been registered and used in bad faith. Respondent using the <caapitalonebank.com>, <capitalonabank.com>, <capitalionebank.com>, and <cpaitalonebank.com> domains to parked websites hosting commercial advertisements demonstrates an intent to disrupt Complainant’s business and confuse and attract Internet users for commercial gain. Respondent hosting malware at the website resolving from the <capatalonebank.com> domain disrupts Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company which is a major financial institution founded in 1988 and which helped pioneer the mass marketing of credit cards.
2. Complainant has registered the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626, registered Aug. 13, 1996), which demonstrates its rights in the mark.
3. Respondent registered the <caapitalonebank.com> domain name on September 6, 2009, the <capitalonabank.com> domain name on November 27, 2009, the <capatalonebank.com> domain name on March 31, 2009, the <capitalionebank.com> domain name on March 30,2009 and the <cpaitalonebank.com> on February 13, 2008.
4. Respondent has used the <caapitalonebank.com>, <capitalonabank.com>, <capitalionebank.com>, and <cpaitalonebank.com> domain names to resolve to websites hosting parked webpages and commercial advertisements. Respondent has used the <capatalonebank.com> domain to resolve to a website hosting malware.
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 (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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has registered the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 1,992,626, registered Aug. 13, 1996), which demonstrates its rights in the mark. See Compl., at Attached Ex. A. Prior panels have agreed and the Panel so concludes on the evidence, that USPTO registrations are sufficient in demonstrating rights in a mark pursuant to Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CAPITAL ONE mark. Complainant submits that Respondent’s <caapitalonebank.com>, <capitalonabank.com>, <capatalonebank.com>, <capitalionebank.com>, and <cpaitalonebank.com> domain names are confusingly similar to the CAPITAL ONE mark as all of the domain names are mere misspellings of the CAPITAL ONE mark. Indeed, Respondent’s domain names all include the term “bank,” and a misspelling of the CAPITAL ONE mark. Panels have routinely concluded that a domain name is confusingly similar to another’s mark where the domain name closely resembles a mark and only differs through misspelling the mark or transposing letters. See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). The Panel finds that Respondent’s domain names are misspellings of the CAPITAL ONE mark and that they are therefore confusingly similar to the mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CAPITAL ONE trademark and to use it in its domain names, making only misspellings of the CAPITAL ONE mark and adding the word “bank”;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has not been commonly known by the disputed domain names, authorized to use the CAPITAL ONE mark in any manner, or been a licensee of Complainant. WHOIS information associated with the domain names shows that Respondent has used a privacy shield to mask their identity. See Compl., at Attached Ex. B. Panels have held that there is no basis to conclude that a respondent is commonly known by a disputed domain name when a privacy service has been used. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel concludes that Respondent is not commonly known by the disputed domain names.
(e) Further, Complainant submits that Respondent’s use of the <caapitalonebank.com>, <capitalonabank.com>, <capitalionebank.com>, and <cpaitalonebank.com> domain names to resolve to websites hosting parked web pages and commercial advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. These domain names resolve to generic parked web pages with click through links related to credit cards, an area related to Complainant’s business. See Compl., at Attached Ex. C. Panels have held that using a confusingly similar domain name to host commercial links that compete with a Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Microsoft Corp. v. BARUBIN, FA 1174478 (Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent hosting competing links on the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use;
(f) Complainant also submits that Respondent using the <capatalonebank.com> domain name to resolve to a website hosting malware also is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <capatalonebank.com> domain name, when resolved, displays the message, “A serious malfunction has been detected with Windows 10 and your chrome 51.0.2704.103. Please call the toll-free number below for a certified technician to help you resolve the issue…” See Compl., at Attached Ex. C. Panels have held that resolving a domain name to a website hosting malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). The Panel concludes that Respondent’s apparent hosting of malware is not a use within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent using the <caapitalonebank.com>, <capitalonabank.com>, <capitalionebank.com>, and <cpaitalonebank.com> domain names to resolve to parked websites hosting commercial advertisements demonstrates an intent to disrupt Complainant’s business and confuse and attract internet users for commercial gain. Again, Respondent’s <caapitalonebank.com>, <capitalonabank.com>, <capitalionebank.com>, and <cpaitalonebank.com> domain names resolve to websites hosting advertisements related to credit cards, the business in which Complainant operates. See Compl., at Attached Ex. C. Panels have held that such use demonstrates bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)); Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). The Panel finds that Respondent’s use of the <caapitalonebank.com>, <capitalonabank.com>, <capitalionebank.com>, and <cpaitalonebank.com> domain names demonstrates bad faith.
Secondly, Complainant submits that Respondent is hosting malware at the website resolving from the <capatalonebank.com> domain name and disrupts Complainant’s business. As stated previously, Respondent’s <capatalonebank.com> domain name displays a message alerting users about the presence of malware on their computers and prompting users to contact a number for assistance. See Compl., at Attached Ex. C. Panels have held that using a confusingly similar domain name to host malware demonstrates bad faith. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). As the Panel finds that Respondent uses the domain name to host malware it finds that such use is in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <caapitalonebank.com>, <capitalonabank.com>, <capatalonebank.com>, <capitalionebank.com>, and <cpaitalonebank.com> domain names using the CAPITAL ONE mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caapitalonebank.com>, <capitalonabank.com>, <capatalonebank.com>, <capitalionebank.com>, <cpaitalonebank.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 16, 2016
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