Capital One Financial Corp. v. Yuudai Medicals
Claim Number: FA1612001707931
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Yuudai Medicals (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone3-60.com>, registered with Upperlink Limited.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2016; the Forum received payment on December 16, 2016.
On January 6, 2017, Upperlink Limited confirmed by e-mail to the Forum that the <capitalone3-60.com> domain name is/are registered with Upperlink Limited and that Respondent is the current registrant of the name. Upperlink Limited has verified that Respondent is bound by the Upperlink Limited 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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2017 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@capitalone3-60.com. Also on December 21, 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 January 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has registered CAPITAL ONE 360 with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,404,709, registered Sept. 17, 2013), which demonstrates its rights in the mark. The <capitalone3-60.com> domain name is confusingly similar to the CAPITAL ONE 360 mark as the domain name includes the entire mark and merely differs through the addition of a hyphen and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name, authorized to use the CAPITAL ONE 360 mark, or been a licensee of Complainant. Respondent’s use of the domain name, to resolve to a website hosting a parked webpage with a search engine and links to Complainant and Complainant’s competitors, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) The disputed domain name should be considered as having been registered and being used in bad faith. Respondent’s use of a domain name confusingly similar to Complainant’s mark to resolve to a website hosting a commercial search engine and third-party links to Complainant’s competitors demonstrates a bad faith attempt to confuse and attract Internet users for commercial gain and compete and disrupts Complainant’s business.
B. Respondent
Respondent has not submitted a Response in this proceeding. The Panel notes that the disputed domain name was created on August 15, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 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.”).
Complainant claims to have registered CAPITAL ONE with the USPTO (e.g., Reg. No. 4,404,709, registered Sept. 17, 2013), which demonstrates its rights in the mark. Panels have to a great extent agreed, and this Panel concludes, that USPTO registrations are sufficient to demonstrate 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).”).
Complainant next claims that Respondent’s domain name is confusingly similar to the CAPITAL ONE mark. Respondent’s domain name <capitalone3-60.com> differs from the CAPITAL ONE mark through the addition of a hyphen and the gTLD “.com.” Panels have held that the presence of punctuation, such as hyphens, and gTLDs do not affect an analysis of confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds that Respondent’s domain name is confusingly similar to the CAPITAL ONE 360 mark under Policy ¶ 4(a)(i).
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 (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 that Respondent has no rights in the domain name, is not a licensee of Complainant, and there is no evidence that Respondent has been commonly known by the disputed domain name. WHOIS information associated with the disputed domain name identifies Respondent as, “Yuudai Medicals.” Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of contradictory information. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum March 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next contends that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent’s domain name resolves to a commercial search engine hosting advertisements for Complainant and Complainant’s competitors. Complainant includes screenshots of the alleged use of the disputed domain name which appears to show a Google search engine page resulting from searching the disputed domain name. Panels have held that using a disputed domain name to resolve to a website hosting a commercial search engine is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). The Panel finds that Respondent is using the disputed domain name to resolve to a commercial search engine, and thus it finds that Respondent’s use of the disputed domain name was not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant argues that Respondent’s use of the disputed domain name demonstrates bad faith competition and disruption and confuses and attracts Internet users for commercial gain. Again, Respondent’s domain name resolves to a website that appears to be a Google search engine results page where Respondent’s domain name has been entered into the search field. Complainant contends that Respondent is using the domain to operate a commercial search engine that displays links to Complainant and Complainant’s competitors. Panels have held that operating a commercial search engine using a disputed domain name that links to a complainant and a complainant’s competitors demonstrates bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Panels have also held that such use can evince bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel finds that Respondent is using the disputed domain name to operate a commercial search engine hosting links to Complainant and Complainant’s competitors, and thus it finds that such use shows bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalone3-60.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 25, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page