Capital One Financial Corp. v. john cordani
Claim Number: FA1702001716294
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is john cordani (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonea36.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 7, 2017; the Forum received payment on February 7, 2017.
On February 8, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <capitalonea36.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 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@capitalonea36.com. Also on February 8, 2017, 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 March 9, 2017, 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 registered the CAPITAL ONE 360 (e.g., Reg. No. 4,404,709, registered Sep. 17, 2013) and CAPITAL ONE (e.g., Reg. No. 2,065,992, registered May 27, 1997) marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <capitalonea36.com> domain name is confusingly similar as it changes the CAPITAL ONE 360 mark by adding the letter “a” between the “ONE” and “360”, removing the number “0” from “360”, and incorporating the generic top-level domain (“gTLD”) “.com” at the end.
Respondent has no rights or legitimate interests in <capitalonea36.com>. There is no evidence that Respondent is commonly known by the marks, nor has Complainant licensed or otherwise permitted Respondent to use Complainant’s marks in any way. Additionally, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, the disputed domain resolves to a parked webpage displaying a search engine and “sponsored listings”. Some of the “sponsored listings” are competitors of Complainant, and one of them redirects users to Complainant’s own site.
Respondent registered and is using the <capitalonea36.com> in bad faith. Respondent uses the disputed domain name to redirect Internet users away from Complainant and its own website that offers a search engine and links to Complainant’s own website and its competitors, which disrupts Complainant’s business and evidences bad faith under Policy ¶ 4(b)(iii).
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, CAPITAL ONE 360 and related marks comprising the family of CAPITAL ONE marks. Complainant has continuously used its marks, since at least as early as 1996, in connection with the provision of a broad spectrum of banking and financial services.
Respondent is John Cordani of Barnet, Great Britain. Respondent’s registrar’s address is listed as Mumbai, India. The Panel notes that Respondent registered <capitalonea36.com> on or about May 14, 2016.
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 is a large financial institution that offers a broad spectrum of financial products and services to consumers in many different countries. Complainant has used the CAPITAL ONE mark since 1988. Complainant registered the CAPITAL ONE 360 (e.g., Reg. No. 4,404,709, registered Sep. 17, 2013) and CAPITAL ONE (e.g., Reg. No. 2,065,992, registered May 27, 1997) marks with the USPTO. Past panels have found that registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark per Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). The Panel here finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <capitalonea36.com> domain name is confusingly similar to Complainant’s mark as it simply inserts a letter, omits a character, and adds the gTLD “.com.” Specifically, Complainant asserts that Respondent created a domain name using the CAPITAL ONE 360 mark and adding an “a”, omitting the “0”, and adding the gTLD “.com”. Prior panels have found that changing marks in these ways to create domain names has not made the domain names distinguishable. See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). Similarly, previous panels have held that adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel here finds that Respondent has not included elements in the disputed domain name that provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
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 (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). Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in <capitalonea36.com>. Prior panels have found that when a respondent fails to respond, relevant decisional information includes the respondent’s WHOIS data, and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Here, the WHOIS data identifies “john cordani” as the registrant. Complainant asserts that no evidence exists to demonstrate that Respondent previously had any connection with the disputed domain name before its registration, nor has Complainant licensed or otherwise permitted Respondent to use Complainant’s mark in any way. Given the lack of evidence or response from Respondent to infer otherwise, the Panel here finds that Respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant further contends that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), as the domain name resolves to a website that lacks any content, except for a search engine and links to Complainant and Complainant’s competitors. Prior panels have held that such behavior does not indicate rights or legitimate interests in a disputed domain name. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The Panel here finds that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant claims that Respondent registered and uses the <capitalonea36.com> domain name in bad faith because Respondent uses the disputed domain name to resolve to a website that displays a search engine, and links to Complainant’s competitors. The Panel notes that Complainant has attached evidence of this alleged behavior. Complainant believes that such behavior disrupts Complainant’s business and demonstrates bad faith under Policy ¶ 4(b)(iii). Past panels have agreed with similar arguments. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Consequently, the Panel may find that Respondent’s competitive disruption of Complainant’s business shows bad faith by Respondent according to Policy ¶ 4(b)(iii). The Panel here finds that Respondent registered and uses the <capitalonea36.com> domain name in bad faith.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As 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 <capitalonea36.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 23, 2017
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