Capital Bank Corporation v. OGHENEOVO OKUMA / CAPITAL CONCEPT
Claim Number: FA1609001692759
Complainant is Capital Bank Corporation (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein LLP, North Carolina. Respondent is OGHENEOVO OKUMA / CAPITAL CONCEPT (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital-bk.com>, registered with eNom, Inc.
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 September 7, 2016; the Forum received payment September 7, 2016.
On September 8, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <capital-bk.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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@capital-bk.com. Also on September 9, 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 October 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here 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.
Parties’ Contentions
Complainant operates as a commercial bank in the United States. In furtherance of its business in the banking industry, Complainant registered the CAPITAL BANK mark with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,898,782, registered Jan. 4, 2011), establishing rights in the mark. Respondent’s disputed domain name is confusingly similar because it incorporates the mark entirely, deletes the space, and abbreviates the “BANK” portion to “BK.” The domain also adds the generic top level domain (“gTLD”) “.com,” as well as a hyphen.
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent has engaged in a fraudulent scheme to phish for Internet user information. See Compl., at Attached Ex. F. The Respondent’s use therefore is not a bona fide offering of goods and services or a legitimate non-commercial or fair use.
Respondent registered and used the domain name in bad faith. Under the language of Policy ¶ 4(b)(iv), Respondent attempted to attract Internet users to its confusingly similar domain for financial gain. Furthermore, its scheme to pass itself off as Complainant and phish for Internet user personal information indicates bad faith under a non-exclusive analysis of Policy ¶ 4(a)(iii).
Respondent did not submit a response. The Panel notes that Respondent registered the <capital-bk.com> domain name June 9, 2016.
Complainant established its rights and legitimate interests in the well-known mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the 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:
(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.
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(f), 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 (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 operates as a commercial bank in the United States. In furtherance of its business in the banking industry, Complainant registered the CAPITAL BANK mark with the USPTO (Reg. No. 3,898,782, registered Jan. 4, 2011), and therefore established rights in the mark pursuant to Policy ¶ 4(a)(i). See Compl., at Attached Ex. C. A Complainant’s registration of a mark with the USPTO confers rights in a mark, even where a respondent resides or operates in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Accordingly, while Respondent reportedly resides or otherwise operates in Nigeria, the Panel finds that Complainant’s proffered USPTO registration establishes Complainant’s protected rights in its mark, pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s disputed domain name is confusingly similar because it incorporates the mark entirely by abbreviating the “Bank” portion and eliminating the space between words of the mark. Such alterations do not overcome a finding of confusing similarity. See Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶ 4(a)(i).). In addition, the domain adds the gTLD “.com” as well as a hyphen. See id. Therefore, while the alterations of the <capital-bk.com> domain name seem analogous to those at issue in Black Hills Ammunition, Inc., the Panel agrees that the disputed domain here is in fact confusingly similar to the mark pursuant to a Policy ¶ 4(a)(i) evaluation.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is 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 (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.”).
Complainant argues Respondent has no rights or legitimate interests in the domain name. In arguing this prong of the Policy, Complainant contends that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Here, Complainant notes that Respondent initially registered the disputed domain as “WHOISGUARD PROTECTED” and thereby engaged a privacy service in an attempt to shield itself online. The Panel notes that the WHOIS currently reflects “OGHENEOVO OKUMA / CAPITAL CONCEPT” as registrant of record. Panels have agreed that incongruous WHOIS information and/or privacy shields do not establish that a respondent is “commonly known by” disputed domains. 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).”); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Therefore, the Panel finds, in light of Respondent’s failure to respond in this proceeding, the WHOIS information does not establish that Respondent is commonly known by the disputed domain under a Policy ¶ 4(c)(ii) analysis.
Further, Complainant contends that Respondent engaged in a fraudulent scheme to pass itself off as Complainant and phish for Internet user information. Complainant included evidence of Respondent’s use of the disputed domain at Attached Exhibit F. The Panel also notes that Complainant provided comparisons via screenshots of its own online offerings and those of Respondent in Attached Exhibit G. Such behavior is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names). While Respondent reportedly passed itself off as Complainant in furtherance of a fraudulent scheme to collect Internet users’ personal information, the Panel finds that such conduct and use is not a bona fide offering of goods and services or a legitimate non-commercial or fair use.
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 containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and used the domain name in bad faith. Under the language of Policy ¶ 4(b)(iv), Complainant urges, Respondent attempted to attract Internet users to its confusingly similar domain for financial gain. Respondent’s use of the disputed domain in Attached Exhibits F and G demonstrate Respondent’s alleged attempts to pass itself off as Complainant, and phish for Internet user information by incorporating similar thematic elements and including dialogue boxes in which Internet users can type in their information. Such use may impute an attempt for commercial gain. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); cf. Juno Online Services, Inc. v. Roberto Iza, FA 245960 (Forum May 3, 2004) (“Respondent’s . . . domain name . . . redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients. Respondent’s use of the domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Accordingly, the Panel finds that Respondent attempted to pass itself off as Complainant in furtherance of a fraudulent scheme for commercial profit. Therefore, the Panel finds that Respondent acted in bad faith pursuant to a Policy ¶ 4(b)(iv), and/or Policy ¶ 4(a)(iii) analysis.
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 <capital-bk.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 12, 2016
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