Capital One Financial Corp. v. Jeroen van't Hoff / HarperJones
Claim Number: FA1702001718606
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Jeroen van't Hoff / HarperJones (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital1investments.com>, registered with Key-Systems GmbH.
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 23, 2017; the Complaint was submitted in both Dutch and English. The Forum received payment on February 23, 2017.
On February 27, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <capital1investments.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 March 10, 2017, the Forum served the Dutch Complaint and all Annexes, including a Dutch Written Notice of the Complaint, setting a deadline of March 30, 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@capital1investments.com. Also on March 10, 2017, the Dutch 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 April 11, 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(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant registered its CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 1,992,626, registered Aug. 13,1996), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <capital1investments.com> domain name is confusingly similar to Complainant’s mark because it merely eliminates the space in the mark, changes the word “one” to the number “1”, adds the generic term “investments” and appends the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its CAPITAL ONE mark in any fashion, and Respondent is not commonly known by the disputed domain name. Further, the Respondent has used the domain name to resolve to a website that contains no content. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the <capital1investments.com> domain name in bad faith. Respondent has failed to make an active use of the domain name which constitutes bad faith under Policy ¶ 4(a)(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 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 Jeroen van't Hoff / HarperJones (“Respondent”), of Hilversum, the Netherlands. Respondent’s registrar’s address is listed as St. Ingbert, Germany. The Panel notes that the disputed domain name was registered on or about May 11, 2014.
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.”).
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Dutch, thereby making the language of the proceedings in Dutch. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Dutch language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant contends it has registered its CAPITAL ONE mark with the USPTO (e.g., Reg. 1,992,626, registered Jul. 5, 2011), and has rights in the mark under Policy ¶ 4(a)(i). Prior panels have found that a USPTO registration confers rights in a mark. 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 rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <capital1investments.com> is confusingly similar to Complainant’s mark because it merely eliminates the space between CAPITAL and ONE, substitutes the number “1” for the term “one,” which has the same meaning and sound, and appends the mark with the generic term “investments” and the “.com” gTLD. Such alterations are not sufficiently distinguishing under Policy ¶ 4(a)(i). See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (finding the <pandora1.com> domain name to be confusingly similar to Complainant’s PANDORA ONE mark due to the similarity between the word ONE and the numeral 1 in meaning and sound.); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). The Panel here finds that <capital1investments.com> is confusingly similar to Complainant’s CAPITAL ONE 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 (ForumAug. 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its CAPITAL ONE mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. 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). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See 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). The Panel here notes that the <capital1investments.com> WHOIS information lists “JEROEN VAN’T HOFF” as the registrant. Absent any contrary evidence from Respondent the Panel here finds that Respondent is not commonly known by <capital1investments.com>.
Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent has failed to make active use of the domain name. A bona fide offering of goods or services is not made when a respondent fails to make use of a domain name. See VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provided evidence of Respondent’s resolving website which contains no content and only a statement noting “Getting started with your domain”. The Panel here finds that this evidence supports a conclusion that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
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.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith. Complainant asserts, and has provided evidence supporting the assertion, that Respondent is using the disputed domain name <capital1investments.com> to resolve to a blank or inactive page. Inactive holding of a domain name constitutes bad faith registration and use. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel here finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
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 <capital1investments.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 26, 2017
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