Capital One Financial Corp. v. theresa omok
Claim Number: FA1802001772975
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is theresa omok (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonegrp.com>, registered with NameCheap, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2018; the Forum received payment on February 22, 2018.
On February 22, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <capitalonegrp.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2018 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@capitalonegrp.com. Also on February 26, 2018, 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 23, 2018, 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 is a major financial institution that offers a broad spectrum of financial products and services to small business, consumers, and commercial clients. Complainant has rights in the CAPITAL ONE mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,442,400, registered Jun. 3, 2008). Respondent’s <capitalonegrp.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark as Respondent merely adds the generic term “grp” and a “.com” generic top level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights and legitimate interests in the <capitalonegrp.com> domain name as Respondent is not authorized or licensed to use Complainant’s CAPITAL ONE mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent fails to make active use of the disputed domain name.
Respondent registered and is using the <capitalonegrp.com> domain name in bad faith as Respondent fails to make active use of the disputed domain name. Furthermore, Respondent registered the disputed domain name with a privacy service, which may be further evidence of bad faith.
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 <capitalonegrp.com> 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.”).
Complainant claims to have rights in the CAPITAL ONE mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its USPTO registrations for the CAPITAL ONE mark (e.g., Reg. No. 3,442,400, registered Jun. 3, 2008). The Panel finds Complainant has sufficiently demonstrated its rights in the CAPITAL ONE mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <capitalonegrp.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark as Respondent merely adds a generic term and gTLD to the mark. Such changes to a complainant’s mark does not negate any confusing similarity between the disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel finds Respondent’s <capitalonegrp.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent has no rights or legitimate interests in the <capitalonegrp.com> domain name as Respondent is not authorized or licensed to use Complainant’s CAPITAL ONE mark and is not commonly known by the disputed domain name. When a respondent fails to submit a response, the WHOIS information of record can be used to determine whether a respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See The Toronto-Dominion Bank v. RD BANK /-, FA1404001554468 (Forum May 13, 2014) (“WHOIS information for the <rdbank.com> domain name lists ‘RD BANK /-‘ as the domain name’s registrant. However, there is nothing in the record that corroborates the WHOIS data’s suggestion that Respondent may be commonly known by the <rdbank.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Complainant provides a copy of the WHOIS information for the disputed domain name which lists Respondent as “theresa omok.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent is not using the <capitalonegrp.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make active use of the disputed domain name. Failure to make demonstrable preparations to use a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… 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 asserts Respondent’s disputed domain name is inactive and provides a screenshot of the website that reads “Sorry! If you are the owner of this website, contact your hosting provider.” Therefore, the Panel finds Respondent’s failure to make active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant does not submit any Policy ¶ 4(b) arguments; however, Policy ¶ 4(b) represents a non-exclusive list and other factors may sustain a finding of bad faith per Policy ¶ 4(a)(iii). 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 Respondent registered and is using the <capitalonegrp.com> domain name in bad faith as Respondent fails to make active use of the disputed domain name. Failure to make an active use of a disputed domain name may be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Complainant provides a screenshot of the resolving website for the disputed domain name, which resolves to a blank website with the message “Sorry! If you are the owner of this website, contact your hosting provider.” The Panel finds Respondent’s failure to make active use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Respondent registered the domain name that fully incorporates the well known CAPITOL ONE mark. It is impossible to conceive of any potential legitimate use of the domain name. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Here, the “Respondent has appropriated a trademark having a strong reputation and widely known.” Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003). “[I]t is not possible to conceive of any plausible actual or contemplated active use of the Domain Name[s] by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” Id. Where a domain name is “so obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, Respondent “could not have chosen or subsequently used… in its Domain Name[s] for any reason other than to trade on that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith.” Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006). From the uncontested allegations and evidence the Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant has proved this element.
DECISION
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 <capitalonegrp.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 28, 2018
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