Capital One Financial Corp. v. DOMAIN PRIVACY SERVICE FBO REGISTRANT
Claim Number: FA1703001722763
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard of Hunton & Williams LLP, Virginia, USA. Respondent is DOMAIN PRIVACY SERVICE FBO REGISTRANT (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonesource.com>, registered with FastDomain Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2017; the Forum received payment on March 21, 2017.
On March 21, 2017, FastDomain Inc. confirmed by e-mail to the Forum that the <capitalonesource.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 March 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@capitalonesource.com. Also on March 22, 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 April 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Capital One Financial Corp, is an American bank holding company specializing in credit cards, home loans, auto loans, banking and savings products. In connection with its business, Complainant uses the CAPITAL ONE trademark. Complainant has rights in the CAPITAL ONE mark as a result of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,442,400, registered on June 3, 2008) and other trademark agencies throughout the world.
2. Respondent’s <capitalonesource.com>[1] is confusingly similar to the CAPITAL ONE mark because it incorporates the mark in its entirety, less the space, paired with the addition of the generic term “source” and the “.com” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <capitalonesource.com> domain name. Respondent is not commonly known by the domain name and Complainant has not licensed or permitted Respondent to use the CAPITAL ONE mark in any respect. Respondent has not made any use of or any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
4. Currently, the domain name resolves to a site which contains a search engine and various click-through hyperlinks which link to Complainant’s own business as well as other financial institutions, including some of Complainant’s competitors. Inclusion of such click-through hyperlinks shows a lack of bona fide offering of goods or services and a lack of any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
5. Respondent has registered and uses the <capitalonesource.com> domain name in bad faith. Respondent disrupts Complainant’s business by including click-through links to Complainant’s own business as well as other financial institutions, including Complainant’s competitors. Respondent is disrupting Complainant’s business with such competing links and thus exhibits bad faith pursuant to Policy ¶ 4(b)(iii). By presumably profiting in a pay-per-click scheme, Respondent is using the domain name to attract Internet users for its own commercial gain. Respondent also engaged a privacy service, which is also evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CAPITAL ONE mark. Respondent’s domain name is confusingly similar to Complainant’s CAPITAL ONE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <capitalonesource.com> domain name and that Respondent registered and uses 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 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, Capital One Financial Corp, is an American bank holding company specializing in credit cards, home loans, auto loans, banking and savings products. In connection with its business, Complainant uses the CAPITAL ONE trademark. Complainant has rights in the CAPITAL ONE mark as a result of its registration with the USPTO (e.g., Reg. No. 3,442,400, registered on June 3, 2008) and other trademark agencies throughout the world. Registration with the USPTO is sufficient to confer rights in a mark under 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).
Complainant argues that Respondent’s <capitalonesource.com> domain name is confusingly similar to the CAPITAL ONE mark because it incorporates the mark in its entirety. The domain name also adds the generic word “source” and the “.com” gTLD, and eliminates spacing between words of the mark. Domain names are confusingly similar to a mark where the domain names consists of a mark or marks and an added term. See Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Also, domain names are confusingly similar to a mark where the domain name consists of a mark or marks and an added gTLD. See NAED Education and Research Foundation, Inc. v. Domain Administrator / Marketing Express, FA 1602497 (Forum March 23, 2015) (“The Panel agrees that the disputed domain name is identical to the NAED mark, and that the addition of a gTLD to the mark is not sufficient to rebut a finding of confusing similarity under Policy ¶ 4(a)(i).”). Thus, the Panel finds Respondent’s <capitalonesource.com> domain name is confusingly similar to the CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <capitalonesource.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in <capitalonesource.com>. First, Complainant states that Respondent is not commonly known by the domain name and Complainant has not licensed or permitted Respondent to use the CAPITAL ONE mark in any respect. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the domain name in dispute, especially when a privacy service has been engaged. 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); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The record shows that a privacy service was used by Respondent, and is still active. The WHOIS information of record identifies Respondent as “Domain Admin / Whois Privacy Corp.” Thus, the Panel concludes that Respondent is not commonly known by the <capitalonesource.com> domain name.
Next, Complainant argues that Respondent has used the domain name to resolve to a website displaying a search engine and pay-per-click hyperlinks. The record shows that the domain name resolves to a site which contains a search engine and various click-through hyperlinks which link to Complainant’s own business as well as other financial institutions, including some of Complainant’s competitors. Such a use is not a bona fide offering of goods or services, or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), respectively. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1583409 (Forum Nov. 24, 2014) (finding that Respondent’s use of the <capitalonebnk.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use” because “using a confusingly similar domain name to display links in competition with the complainant’s services is not a use which falls within Policy ¶¶ 4(c)(i) 4(c)(iii).”). The Panel agrees that Respondent’s use of the <capitalonesource.com> domain name does not give the Respondent rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and used the domain name <capitalonesource.com> in bad faith. Complainant alleges that Respondent disrupts Complainant’s business by including on its resolving website click-through links to Complainant’s own business as well as other financial institutions, including Complainant’s competitors (e.g., “Loans,” “Capital One,” and “Visa Credit Card”). Such use constitutes evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)). Using the <capitalonesource.com> domain name for this purpose amounts to bad faith within the meaning of Policy ¶ 4(b)(iii).
Complainant next contends that the various click-through hyperlinks displayed on Respondent’s resolving website are pay-per-click hyperlinks which net Respondent financial gain. These links refer to Complainant’s own business as well as other financial institutions, including some of Complainant’s competitors, such as CitiBank, Chase, Visa, MasterCard, and American Express. It is reasonable to conclude that such hyperlinks financially benefit Respondent and thus constitute bad faith under Policy ¶ 4(b)(iv). See 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).”). Therefore, the Panel agrees this is evidence of bad faith under Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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 <capitalonesource.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 27, 2017
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