Capital One Financial Corp. v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1703001722770
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tcapitalone.com>, registered with Internet Domain Service BS Corp.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2017; the Forum received payment on March 21, 2017.
On March 23, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <tcapitalone.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 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@tcapitalone.com. Also on March 24, 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 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] Complainant has legitimate rights to the CAPITAL ONE mark, and the disputed domain name <Tcapitalone.com> is identical or confusingly similar to Complainant’s trademark. See Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (FORUM March 25, 2014) (finding that Complainant’s USPTO registration for the CAPITAL ONE mark satisfies the Policy ¶4(a)(i) rights requirement, regardless of where Respondent resides.”); see also Capital One Financial Corp. v.
Paydayloanz.com, FA1463493 (FORUM October 22, 2012) (concluding that Complainant has “secured rights in its CAPITAL ONE mark through its various global trademark registrations.”); see also Capital One Financial Corp. v. MGA Enterprises Ltd., FA 1467312 (FORUM December 10, 2012) (finding that “Complainant has rights in the CAPITAL ONE trademark under Policy ¶4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO….[t]his is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Complainant’s residence or place of business.”); see also Capital One Financial Corp. v. DCH, FA 1487835 (FORUM April 9, 2013) (finding that “Complainant has adequately established rights in the CAPITAL ONE BANK mark under Policy ¶4(a)(i).”). UDRP Policy ¶4(a)(i).
Complainant, Capital One Financial Corp., is a major financial institution headquartered in McLean, Virginia. Capital One was founded in 1988 and helped pioneer the mass marketing of credit cards in the early 1990s. Complainant offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients. Complainant has consistently used the CAPITAL ONE mark to promote its goods and services since its inception.
Respondent’s disputed domain name <Tcapitalone.com> is confusingly similar to Complainant’s CAPITAL ONE trademark because Respondent’s domain name is a simple misspelling or typographical error that an Internet user might make when typing in Complainant’s mark, as Respondent merely appends the letter “t” to the beginning of Complainant’s mark. A common misspelling and typo of Complainant’s mark does not sufficiently distinguish a disputed domain name and a mark. See Capital One Financial Corp. v. Bin G Glu / G Design, FA1659671 (FORUM March 14, 2016) (concluding that “…the disputed domain name is confusingly similar to Complainant’s trademark. Ignoring the non-distinctive gTLD, ‘.com’, the domain name is a trivial misspelling of the trademark and remains phonetically identical to the trademark.”); see also Capital One Financial Corp. v. Bridge Port / Bridge Port Enterprises, FA1650470 (FORUM January 7, 2016) (finding that “…the <capitalon.com> domain name is confusingly similar to the CAPITAL ONE mark pursuant to Policy ¶4(a)(i)” because “…the Respondent uses the entire mark, minus the space between the words, but has simply removed the letter ‘e’ from the word one.’”); see also Capital One Financial Corp. v. Domain Manager / GV LLC, FA 1586094 (FORUM December 9, 2014) (finding that the “<capitalones.com> domain name and CAPITAL ONE mark are confusingly similar…” because “[s]imply adding an ‘s’ to Respondent’s domain name does not adequately distinguish it from Complainant’s mark.”); see also Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also Capital One Financial Corp. v. Zhichao Yang, FA 1473336 (FORUM January 9, 2013) (finding that “Respondent’s disputed domain names are confusingly similar to Complainant’s CAPITAL ONE mark because the domain names are merely typographical errors of the mark, which do not sufficiently distinguish the disputed domain name from Complainant’s mark.”).; see also Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (FORUM March 25, 2014) (finding that “Respondent’s <capitalone.net> domain is identical to the CAPITAL ONE mark but for the removal of the space and the addition of the generic top-level domain…”.net.” These changes do not distinguish the domain name from Complainant’s mark.”) ; see also Marriott Int'l, Inc. v. Seocho, FA 149187 (FORUM Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark). Moreover, addition of the generic top- level domain “.com” to Respondent’s domain names is insufficient to distinguish the disputed domain names from Capital One’s marks. See Wells Fargo & Company v. Pinnacle Management Group, Inc., FA1272346 (FORUM August 18, 2009)(the addition of the generic top-level domain “.com” does not sufficiently distinguish the disputed domain name from Complainant’s mark because a top-level domain is a required element of all Internet domain names). UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
[b.] Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject to this Complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Complainant has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant. Such evidence is sufficient to establish a respondent’s lack of rights to the disputed domain name. See Capital One Financial Corp. v. Bin G Glu / G Design, FA1659671 (FORUM March 14, 2016) (finding that Respondent lacks rights and legitimate interest in the domain name because “[t]he publicly available WHOIS information provides no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights [and] [t]here is no evidence that Complainant has authorized Respondent to use the trademark.”); see also Capital One Financial Corp. v. Domain Admin / E-Promote, FA1602631 (FORUM March 10, 2015) (finding that “…Respondent has no rights or legitimate interests in the disputed domain name…Respondent is not commonly known by the disputed domain name, as the WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant has never authorized Respondent to use the CAPITALONE.COM mark.”); see also Capital One Financial Corp. v. Domain Admin / Whois Privacy Corp., FA 1582803 (FORUM November 13, 2014) (finding that “there is no basis for finding Respondent to be commonly known by the disputed domain name under Policy ¶4(c)(ii) because there is no evidence that Respondent has ever been commonly known by the name <capitaloneautoloan.org>.”); see also Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (March 25, 2014) (finding that “there is no basis in the record for a finding that Respondent is known by the disputed domain name under Policy ¶4(c)(ii)” since “[t]he WHOIS information lists ‘Ryan G Foo’ of ‘PPA Media Services’ as the registrant of record.”); see also Capital One Financial Corp. v. CW Inc., FA 1527001 (FORUM November 25, 2013) (concluding that “Respondent is not commonly known by the <capitalonerewards.com> domain name” and finding that “there is no evidence that tends to prove that, notwithstanding the WHOIS record, Respondent is otherwise commonly known by the at-issue domain name”); see also Capital One Financial Corp. v. PPA Media Services / Ryan G. Foo, FA 1485206 (FORUM April 1, 2013) (concluding that “Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the contemplation of Policy ¶4(c)(ii).”); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (FORUM July 17, 2006 (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Capital One Financial Corp. v. MGA Enterprises Ltd., FA 1467312 (FORUM December 10, 2012) (finding that “the WHOIS information for the contested domain name identifies the registrant only as ‘mga enterprises limited,’ which does not resemble the domain name.” And concluding that “Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in it under Policy ¶4(c)(ii).”).
Respondent’s lack of rights or legitimate interests in the disputed domain name is further evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name <Tcapitalone.com> houses a website displaying a search engine and “sponsored listings.” Specifically, Respondent’s website provides links 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. One reaches these pages by simply typing in the name of one of Complainant’s competitors in the search engine, or by clicking on any of the “sponsored listings” depicted on the page. Such actions are sufficient to establish that Respondent’s actions are not in connection with a bona fide offering of goods or services. See Capital One Financial Corp. v. Domain Admin / E- Promote, FA1602631 (FORUM March 10, 2015) (concluding that “…as Respondent’s offerings are commercial hyperlinks, there can logically be no ‘commercial or fair use’ under Policy ¶4(c)(iii).”); see also Capital One Financial Corp. v. Bridge Port / Bridge Port Enterprises, FA1650470 (FORUM January 7, 2016) (finding that Respondent’s use of “…the <capitalon.com> domain name to display links to competing financial institutions…does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name under Policy ¶¶4(c)(i) and (iii).”); see also Capital One Financial Corp. v. shilei, FA1620200 (FORUM June 18, 2015) (concluding that “[t]he Respondent presumably attempts to profit through click-through fees; therefore, there can logically be no ‘noncommercial or fair use’ pursuant to Policy ¶4(c)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1583409 (FORUM November 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).”); see also Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (FORUM March 25, 2014) (finding that “Respondent’s use of the domain name to host competing and related hyperlinks 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.”); see also Capital One Financial Corp. v. CW Inc., FA 1527001 (FORUM November 25, 2013) (finding that Respondent’s use of the domain name to provide “links to other financial institutions, some of which may compete with Complainant” is neither a “bona fide offering of goods or services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.”); see also Capital One Financial Corp. v. Bin G Glu / G Design, FA 1542631 (March 20, 2014) (finding that “Respondent has no rights to or legitimate interests in the disputed domain name…” and that “Respondent is not using the <capiitalone.com> domain name in connection with a Policy ¶4(c)(i) bona fide offering of goods or services or a Policy ¶4(c)(iii) legitimate noncommercial or fair use.”); see also Expedia, Inc. v. Compaid, FA520654 (FORUM August 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial use or fair use pursuant to Policy ¶4(c)(iii)); see Capital One Financial Corp. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 487712 (FORUM April 8, 2013) (finding that Respondent’s use of the <capitalonecreditcard.com> domain name to present site visitors with a variety of links to third parties “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.”); see Capital One Financial Corp. v. DCH, FA 487835 (FORUM April 9, 2013) (finding that the use of “a disputed domain name solely to display competing hyperlinks does not demonstrate a bona fide offering or a legitimate noncommercial or fair use.”).
[c.] The disputed domain name should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to directory websites and a commercial search engine that displays third-party links to Complainant’s competitors. Respondent’s disputed domain name <Tcapitalone.com> houses a website with a search engine and directory. Specifically, Respondent’s website provides links 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. One reaches these pages by simply typing in the name of one of Complainant’s competitors in the search engine, or by clicking on any of the links depicted on the page. This use results in a disruption of Complainant’s business and intentionally attracts Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent is benefiting from the valuable goodwill that Complainant has established in its mark and such actions are sufficient to establish the bad faith requirement. See Capital One Financial Corp. v. Bridge Port / Bridge Port Enterprises, FA1650470 (FORUM January 7, 2016) (finding bad faith registration where “…Respondent uses the confusing similarity of Respondent’s domain name to intentionally attract Internet users to its website, through which it gains financially by hosting competing pay-per-click links.”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1583409 (FORUM November 24, 2014) (finding that “Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iii)” since the at-issue website “features links to competing third- party websites to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <capitalonebnk.com> domain name. Respondent is presumably commercially benefiting from the valuable goodwill Complainant has established in its CAPITAL ONE marks.”); see also Capital One Financial Corp. v. CW Inc., FA 1527001 (FORUM November 25, 2013) (finding that “since the domain name addresses a website offering links to Complainant’s competitors and since it appears that Respondent intends to profit from the good faith associated with Complainant’s mark, the relevant circumstances indicate that Respondent is attempting to attract, for commercial gain, Internet users to the <capitalonerewards.com> website by creating a likelihood of confusion between Complainant’s CAPITAL ONE mark and the at-issue domain name.”); see also Capital One Financial Corp. v. shilei, FA1620200 (FORUM June 18, 2015) (concluding that “[t]he Respondent has engaged in bad faith use and registration of the disputed domain name[]” because “…Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website…[and] Respondent uses pay-per-click hyperlinks on its resolving website, which redirect users to various third-party websites….the use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith under Policy ¶4(b)(iii).”); see also Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (FORUM March 25, 2014) (finding that “Respondent acted in bad faith under Policy ¶4(b)(iii)” and that “Respondent demonstrates bad faith commercial disruption as Respondent uses the disputed domain name for hyperlinks to services competing with those offered under Complaint’s CAPITAL ONE mark.”); see also 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 products of the complainant and to complainant’s competitors, as well as diverting Internet users to several other domain names.); see also Capital One Financial Corp. v. MGA Enterprises Ltd., FA 467312 (FORUM December 10, 2012) (finding that “Respondent’s use of the disputed domain name in the manner described in the Complaint disrupts Complainant’s business, and therefore demonstrates that Respondent both registered and uses the domain name in bad faith under Policy ¶4(b)(iii).”); see also Capital One Financial Corp. v. Above.com Domain Privacy, FA 1550011 (FORUM April 25, 2014) (concluding that “Respondent is using the <mycapitalonebank.com> domain name to display a search engine and links related to the goods and services offered by Complainant. The Panel finds that this is disruptive, showing bad faith under Policy ¶4(b)(iii).”); see also Capital One Financial Corp. v. Domain Admin, FA 1555172 (FORUM May 26, 2014) (finding bad faith under Policy ¶4(b)(iii) because “Respondent’s use of the disputed domain name to host advertisements for businesses that compete with Complainant illustrates the intent to confuse Internet users who may believe Complainant has some association with Respondent. Respondent no doubt profits from this confusion through advertising revenue.”); see also Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1550718 (FORUM April 30, 2014) (finding that “Respondent is using the disputed domain name to divert Internet customers seeking Complainant to its competing financial websites, disrupting Complainant’s business.”).
In addition, Respondent, JEAN LUCAS / DOMCHARME GROUP, has had eleven decisions entered against Respondent, showing a pattern of bad faith registration and use. See Capital One Financial Corp. v. JEAN LUCAS / DOMCHARME GROUP, FA1650469 (FORUM January 4, 2016) (concluding that Respondent’s disputed domain name [<capitaloe.com>] resolves to a website that displays commercial click-through links from which Respondent presumably profits.…Respondent has acted in bad faith under Policy ¶4(b)(iv).”); see also Under Armour, Inc. v. JEAN LUCAS / DOMCHARME GROUP, FA1603208 (FORUM March 16, 2015) (finding “…typosquatting from that fact that Respondent substituted one letter for another to create a common misspelling of the mark… [t]herefore, the Panel agrees Respondent to have engaged in typosquatting, and finds bad faith under Policy ¶4(a)(iii).”); see also Macy’s Retail Holdings, Inc. and its subsidiary Macy’s West Stores, Inc. v. JEAN LUCAS / DOMCHARME GROUP, FA1581348 (FORUM October 29, 2014) (concluding that “Respondent has been a party to numerous prior proceedings under the Policy, including Orbitz Worldwide, LLC v. Domcharme Group C/O Jean Lucas, FA 1495346 (FORUM June 4, 2013) (finding that <cheapptickets.com>, <cheaptivkets.com>, <cheeaptickets.com>, <chepatickets.com>, <orbibtz.com>, <orbitzt.com>, and <orbuitz.com> were registered in bad faith); Liberty Procurement Co. f/k/a Bed Bath & Beyond Procurement Co. v. Domcharme Group / Jean Lucas, FA 1481719 (FORUM Feb. 26, 2013) (finding that <bdbathandbeyond.com> was registered in bad faith); Kohl’s Illinois, Inc. v. Domcharme Group / Jean Lucas / lohls.com / Elias Skander, FA 1474698 (FORUM Jan. 23, 2013) (finding that <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> were registered in bad faith); Brookstone Co. v. Domcharme Group / Jean Lucas, FA 1393874 (FORUM July 12, 2011) (finding that <broookstone.com> was registered in bad faith). For the same reasons as those expressed by the panels in those cases, the Panel finds that the disputed domain names <bloomingdles.com> and <loomingdales.com> were registered and have been used in bad faith.”).
In addition, Respondent registered the disputed domain names with a privacy service, further evidence that the domain was registered in bad faith. See Capital One Financial Corp. v. PATRIC BAUER / VENTURE CAPITAL ONE GROUP, FA 1599899 (FORUM February 25, 2015) (finding bad faith registration where “Respondent registered the disputed domain name using a WHOIS privacy service. This Panel has repeatedly held this raises the rebuttable presumption of bad faith in the commercial context.”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1583409 (FORUM November 24, 2014) (finding that registration of the disputed domain name using a privacy service “[i]n the commercial context…raises the rebuttable presumption of bad faith use and registration…[and] justifies a finding of bad faith registration and use.”); see also Capital One Financial Corp. v. DCH, FA 487835 (FORUM April 9, 2013) (concluding that “the fact Respondent originally registered the domain name with a privacy service in a commercial context raises the rebuttable presumption of bad faith registration and use…That fact alone sufficiently demonstrates bad faith registration and use.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 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 registered this mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,442,400, registered June 3, 2008) and other trademark agencies throughout the world. Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. 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’s evidence of a USPTO registration for the CAPITAL ONE mark is sufficient to establish its rights under Policy ¶4(a)(i).
Complainant claims Respondent’s <tcapitalone.com> is confusingly similar to the CAPITAL ONE mark because it incorporates the mark in its entirety. The disputed domain name also adds the initial letter “t”, the “.com” gTLD, and eliminates spacing between words of the mark. Panels have determined domain names are confusingly similar to a mark where the domain names consisted of a mark or marks and the addition of a single letter. 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).”). Omission of a space in a mark is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. Likewise, a TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). Respondent’s <tcapitalone.com> is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent has no rights or legitimate interests in <tcapitalone.com>. Complainant has not licensed or permitted Respondent to use the CAPITAL ONE mark in any respect. Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name, especially where a privacy service was used. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmForum.com> domain name pursuant to Policy ¶4(c)(ii)); 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). In this case, Respondent used a privacy service to register the domain name. The beneficial owner was revealed only when this Proceeding was commenced. The WHOIS information of record now identifies Respondent as “Maddisyn Fernandes” with “Fernandes Privacy Holdings.” There is no obvious relationship between that name and 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). Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the disputed domain to host a website displaying a dynamic search engine parking page and pay-per-click hyperlinks. 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 various click-through hyperlinks link to Complainant’s own business as well as some of Complainant’s competitors. Respondent has acquired no rights under Policy ¶¶4(c)(i) or (iii) under such circumstances.
In addition, Respondent has acquired no rights by registering the disputed domain name because Respondent has not publicly associated itself with the domain name. Title to the domain name is held by a naked trustee, who disclaims any interest in the domain name. The public does not know Respondent’s identity.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered and uses the domain name <tcapitalone.com> in bad faith. Respondent disrupts Complainant’s business by including click through links to Complainant’s own business as well as competing financial institutions. Such use indicates 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)). Therefore, this Panel finds Respondent registered and uses the domain name in bad faith under Policy ¶4(b)(iii).
Complainant claims the various click through hyperlinks displayed are pay-per-click hyperlinks which net Respondent financial gain (even if Respondent only gets free web hosting). Using a disputed domain name to display hyperlinks on a dynamic parking page which financially benefit respondents constitutes 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).”). The pay per click dynamic parking page displays links to Complainant, Complainant’s competitors and others, such as CitiBank, Chase, Visa, MasterCard, and American Express. Respondent has registered and uses the domain name in bad faith under Policy ¶4(b)(iv).
Finally, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut that presumption. Therefore, this Panel is willing to find bad faith registration and use on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tcapitalone.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 25, 2017
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