Capital One Financial Corp. v. Mason Monroe / Litts Construction
Claim Number: FA1805001787968
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Mason Monroe / Litts Construction (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloone.online>, registered with Web4Africa 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on May 22, 2018; the Forum received payment on May 22, 2018.
On May 25, 2018, Web4Africa Inc. confirmed by e-mail to the Forum that the <capitaloone.online> domain name is registered with Web4Africa Inc. and that Respondent is the current registrant of the name. Web4Africa Inc. has verified that Respondent is bound by the Web4Africa 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 May 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 20, 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@capitaloone.online. Also on May 31, 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 June 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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. It has rights in the CAPITAL ONE mark based on its registration of that mark with the United States Patent and Trademark Office (Reg. No. 1,992,626) on August 13, 1996. Respondent’s <capitaloone.online> domain name (the “Domain Name”) is confusingly similar to Complainant’s mark because it incorporates the entire CAPITAL ONE mark, but misspells it and adds the generic top-level domain (“gTLD”) “.online.”
Respondent lacks rights and legitimate interests in the Domain Name. He is not commonly known by the Domain Name, nor has Complainant authorized him to use the CAPITAL ONE trademark in any way. Respondent fails to use the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, he uses it to host a parked webpage that contains a search engine with links to Complainant and its competitors.
Respondent registered and is using the Domain Name in bad faith. Respondent uses it to disrupt Complainant’s business by directing internet traffic to Respondent’s webpage which contains advertisements for and links to Complainant and Complainant’s competitors. He is benefitting from the valuable goodwill associated with Complainant’s CAPITAL ONE mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 Panel makes the findings set forth below with respect to the Domain Names.
Further, Respondent’s <capitaloone.online> Domain Name is confusingly similar to Complainant’s CAPITAL ONE mark in that it fully incorporates the mark, albeit with an intentional misspelling (adding a superfluous “o”), and adds the “.online” gTLD. The misspelling of a complainant’s mark and the inclusion of a gTLD in the domain name are insufficient to distinguish it from a complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).
Based upon the forgoing, the Panel finds that the Domain Name is confusingly similar to the CAPITAL ONE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, (ii) Complainant has not licensed or authorized Respondent to use its mark for any purpose, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it resolves to a parked web site displaying a search engine and “sponsored listings” which provide links to Complainant’s own business as well as other financial institutions, including some of Complainant’s competitors. These allegations are supported by competent evidence. According to the WHOIS information submitted as Complaint Exhibit B, the Domain Name is registered to “Mason Monroe / Litts Construction,” which names bear no resemblance to the Domain Name. This is competent evidence that Respondent is not commonly known by the Domain Name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Further, Complainant states that it has never authorized Respondent to use its CAPITAL ONE mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Additionally, the Domain Name resolves to a web site that hosts a parked webpage containing links to Complainant’s business as well as to others, including some of Complainant’s competitors. See, Complaint Exhibit C. Use of a domain name to host a parked webpage that contains links to Complainant’s business and to Complainant’s competitors does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence discussed above in connection with the rights or legitimate interests analysis to the effect that the Domain Name resolves to a web site containing links to Complainant’s web site and those of other financial institutions, some of which compete with Complainant, is also evidence of bad faith registration and use. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name to lure Internet traffic to a web site containing links to a complainant’s competitors has often been held to be evidence of bad faith under the Policy. 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), Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”), American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”).
As alleged by Complainant, this conduct disrupts Complainant’s business by causing confusion for Internet users who seek Complainant’s web site and because of a typing error stumble onto Respondent’s web site. Respondent may not in the strictest sense of the word be a competitor of Complainant so as to fit precisely within the circumstance articulated in Policy ¶ 4(b)(iii), but again, given the nonexclusive character of Policy ¶ 4(b), he is nevertheless using a confusingly similar domain name to attract users to his web site by causing confusion as to the source, sponsorship, affiliation or endorsement of his web site. This causes confusion and uncertainty for Internet users who are seeking Complainant’s web site and inadvertently find themselves looking at Respondent’s web site instead. It disrupts Complainant’s business, and is evidence of bad faith.
Further, Respondent has engaged in typosquatting, which in itself supports a finding of bad faith under the Policy. Typosquatting consists of intentionally misspelling a domain name in a manner that causes it to appear at first glance to be the complainant’s domain name but is nevertheless slightly different, and this is independent evidence of bad faith. Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Respondent’s misspelling of Complainant’s CAPITAL ONE mark is clear evidence of intent to deceive, and constitutes evidence of bad faith registration and use.
According to the USPTO registration statement for the CAPITAL ONE mark (Reg. No. 1,992,626) attached to the Complaint as Exhibit A, Attachment 1, pp. 70-71, Complainant has used that mark in commerce since December 1994. Given that fact and Complainant’s demonstrated world-wide presence in the financial services industry, plus the fact that Respondent’s web site contains links to the sites of other firms involved in the same industry, it is clear that Respondent knew of Complainant’s mark when he registered the Domain Name. Indeed, it is evident that Respondent registered it precisely because it does contain Complainant’s mark and would likely attract Internet traffic to his site. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent clearly knew of Complainant and its mark when he registered the Domain Name, and this is clear evidence of bad faith registration.
Finally, Complainant asserts that Respondent registered and is using the Domain Name to divert users, presumably for commercial gain, which is evidence of bad faith under Policy ¶ 4(b)(iv). A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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). In this case, the web site resolving from the Domain Name contains links to Complainant and other entities. Complainant alleges that the Respondent profits from this in some way but there is no evidence before the Panel of any commercial gain currently being generated from this use. Nevertheless, as noted above, the list of circumstances in Policy ¶ 4(b) is not exclusive. The fact that Respondent incorporated Complainant’s CAPITAL ONE mark so obviously into the Domain Name is ample evidence that he is intentionally attempting to attract Internet users by creating confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Even without evidence of revenues present at this time, the obvious copying of Complainant’s registered mark in this Domain Name is sufficient evidence of bad faith registration and use for the purposes of Policy ¶ 4 (a)(iii). Red Bull GmbH v. Gutch, WIPO Case No. 2000-0766 (September 21, 2000) (finding bad faith registration and use where respondent’s domain name incorporated complainant’s mark verbatim but respondent had not yet activated the resolving web site).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <capitaloone.online> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: June 27, 2018
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