Capital One Financial Corp. v. Michale Jackson
Claim Number: FA1708001742882
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Michale Jackson (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone.pro>, registered with 101domain GRS 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2017; the Forum received payment on August 3, 2017.
On August 3, 2017, 101domain GRS Limited confirmed by e-mail to the Forum that the <capitalone.pro> domain name is registered with 101domain GRS Limited and that Respondent is the current registrant of the name. 101domain GRS Limited has verified that Respondent is bound by the 101domain GRS 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 August 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@capitalone.pro. Also on August 3, 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 August 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Capital One Financial Corp., offers banking services and has registered the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of its business. Respondent’s <capitalone.pro> is identical to Complainant’s CAPITAL ONE mark as it simply appends the “.pro” generic top-level-domain (“gTLD”) to Complainant’s otherwise wholly incorporated mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its CAPITAL ONE mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use; instead, <capitalone.pro> redirects users to Respondent’s <wiretree.ca> domain, presumably for Respondent’s commercial gain.
Respondent registered and uses <capitalone.pro> in bad faith. Respondent creates confusion as to the source of the disputed domain name in an attempt to trade on the goodwill associated with the CAPITAL ONE mark. Respondent had actual knowledge of Complainant’s rights in the CAPITAL ONE mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <capitalone.pro> domain name.
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.”).
First, Complainant asserts rights in the CAPITAL ONE mark based upon registration with the USPTO (Reg. No. 1992626, registered Aug. 13, 1996). Registration of a mark with the USPTO sufficiently establishes rights in that mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds Complainant has established rights in the CAPITAL ONE mark.
Complainant argues that Respondent’s <capitalone.pro> is identical to Complainant’s CAPITAL ONE mark as it simply appends the “.pro” gTLD to Complainant’s otherwise wholly incorporated mark. The addition of a gTLD to a complainant’s mark is insufficient to differentiate said mark from the resulting domain name per Policy ¶ 4(a)(i). See SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). The Panel finds that Respondent’s domain name to be identical to Complainant’s CAPITAL ONE mark.
Complainant has proved this element.
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 asserts that Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use its CAPITAL ONE mark. Where a respondent fails to submit a response, WHOIS information can substantiate a finding 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 WHOIS information on record lists “Michale Jackson” as the registrant of the domain name. Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use the CAPITAL ONE mark supports a finding that Respondent does not have rights or legitimate interests in 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). Therefore, the Panel concludes that Respondent is not commonly known by the <capitalone.pro> domain name.
Next, Complainant asserts Respondent failed to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use; instead, <capitalone.pro> redirects users to Respondent’s <wiretree.ca> domain, presumably for Respondent’s commercial gain. Use of a disputed domain name to resolve to an unrelated website demonstrates a respondent’s lack of rights and legitimate interests in said domain name per Policy ¶¶ 4(c)(i) & (iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). The Panel finds Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant has proved this element.
Complainant asserts Respondent registered and uses <capitalone.pro> in bad faith as Respondent creates confusion as to the source of the disputed domain name in an attempt to trade on the goodwill associated with the CAPITAL ONE mark. A respondent’s use of a complainant’s mark—for said respondent’s commercial benefit—to attract Internet users otherwise seeking said complainant evinces a finding of bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, the resolving website is unrelated to Complainant’s business. The Panel finds Respondent’s use of the domain name to be in bad faith.
Last, Complainant asserts Respondent had actual knowledge of Complainant’s rights in the CAPITAL ONE mark prior to registration of the disputed domain name. Actual knowledge of a complainant’s rights in a mark can be determined from an analysis of the name a respondent uses for a disputed domain and the use made of said domain. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s rights in the CAPITAL ONE mark—bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <capitalone.pro> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 28, 2017
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