Credit One Financial v. Samuel Naquin
Claim Number: FA1802001773956
Complainant is Credit One Financial (“Complainant”), represented by Markus B. Hopkins of Manatt, Phelps & Phillips LLP, California, USA. Respondent is Samuel Naquin (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <icreditone.com> and <icredit1.com>, registered with 1&1 Internet SE.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2018; the Forum received payment on February 27, 2018.
On March 5, 2018, 1&1 Internet SE confirmed by e-mail to the Forum that the <icreditone.com> and <icredit1.com> domain names are registered with 1&1 Internet SE and that Respondent is the current registrant of the names. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@icreditone.com, postmaster@icredit1.com. Also on March 5, 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 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Credit One Financial is a full service community bank serving over 7 million members across the United States.
Complainant uses the CREDIT ONE mark to advertise its products and services, and claims rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,303,420 registered Oct. 2, 2007).
Respondent’s <icreditone.com> and <icredit1.com> domain names are each confusingly similar to the CREDIT ONE mark, as each contains the mark in its entirety, merely adding the letter “i” in front of the mark in both names, and the generic top level domain (“gTLD”) “.com.” Respondent also changed the word “one” in the mark to the number “1” in creating the <icredit1.com> domain name.
Respondent does not have rights or legitimate interests in the <icreditone.com> and <icredit1.com> domain names. Respondent is not commonly known by either domain name and Complainant has not granted Respondent permission or license to use the CREDIT ONE mark for any purpose. Respondent has failed to make an active use of the disputed domain names. In addition, Respondent offers to sell the disputed domain names to Complainant for a disproportionate amount of money.
Respondent has registered and used the <icreditone.com> and <icredit1.com> domain names in bad faith. Respondent offers to sell the disputed domain names for more than its out-of-pocket registration costs. In addition, Respondent fails to make an active use of the disputed domain names. Finally, Respondent registered the <icreditone.com> and <icredit1.com> domain names with actual knowledge of the CREDIT ONE mark and Complainant’s rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CREDIT ONE mark as demonstrated by its registration of such mark with the USPTO, and otherwise.
Complainant’s rights in the CREDIT ONE mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent holds the <icreditone.com> and <icredit1.com> domain names inactively and offered them for sale to Complainant.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for its CREDIT ONE trademark evidences its rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, each at-issue domain name contains Complainant’s entire CREDIT ONE trademark, less its space, prefixed with the letter “I”. In one case the word “one” is changed to the numeral “1.” In both cases the top level domain name “.com” is added to complete each domain name. These slight differences between the domain names and Complainant’s mark are insufficient to distinguish one from the other under the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <icreditone.com> and <icredit1.com> domain names are each confusingly similar to Complainant’s CREDIT ONE trademark. See ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . ”); see also 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, Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at‑issue domain name.
WHOIS information for the at-issue domain names identifies their registrant as “Samuel Naquin.” The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <icreditone.com> or the <icredit1.com> domain name. The Panel therefore concludes that Respondent is not commonly known by either at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See 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).
Furthermore, Respondent holds the at-issue domain names inactively and offers each for sale. Such use of the domain names constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a non-commercial or fair use under Policy ¶4(c)(iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <icreditone.com> and <icredit1.com> domain names were each registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding each domain name, pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent offered to sell the at-issue domain names to Complainant for $25,000. Offering to sell a confusingly similar domain name for an amount in excess of out-of-pocket costs suggests bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Next, Respondent fails to make any active use of either domain name as neither domain name addresses an active website. Respondent’s inactive holding of the confusingly similar domain names is indicative of bad faith under paragraph 4(a)(iii), notwithstanding that such circumstance is not expressly set out in paragraph 4(b). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)).
Finally, Respondent registered <icreditone.com> and <icredit1.com> knowing that Complainant had trademark rights in CREDIT ONE. Respondent’s prior knowledge is evident given Respondent’s multiple registrations of confusingly similar domain names containing Complainant’s CREDIT ONE trademark. It follows that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <icreditone.com> and <icredit1.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <icreditone.com> and <icredit1.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 28, 2018
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