Capital One Financial Corp. v. Igor berezner
Claim Number: FA1805001789439
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Igor berezner (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonecryptocurrency.com>, registered with GoDaddy.com, LLC.
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.
LUIZ EDGARD MONTAURY PIMENTA as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2018; the Forum received payment on May 31, 2018.
On May 31, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitalonecryptocurrency.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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@capitalonecryptocurrency.com. 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.
A timely Response was received and determined to be complete on June 11, 2018.
On June 14, Complainant and Respondent sent the Forum their additional submissions.
On May 7, Respondent sent the Forum its additional submissions.
On May, 31, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed LUIZ EDGARD MONTAURY PIMENTA 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns over 100 applications or registrations for the word mark CAPITAL ONE all over the world, including the United States.
Complainant states that they are a major financial institution headquartered in McLean, Virginia, founded in 1988 and helped pioneer the mass marketing of credit cards in the early 1990s. Also, argues that they offer a broad spectrum of financial products and services to consumers, small businesses and commercial clients, using the trademark CAPITAL ONE.
Complainant defends that the disputed domain name is identical or confusingly similar to Complainant’s trademark, adding only the descriptive term “cryptocurrency” which directly relates to Complainant’s business, as well as the generic top-level domain (“gTLD”) “.com.”, which are not sufficient to distinguish the disputed domain name from the trademark.
Complainant alleges that Respondent has no right or legitimate interests in the disputed domain name, as it is not commonly known by the domain name. Complainant also states that Respondent’s lack of rights or legitimate interest in the disputed domain names 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. The disputed domain name contains no content; only a statement noting “Website Coming Soon!”.
Complainant states that Respondent is not using the disputed domain name for a bona fide offering of goods or services since the disputed domain name is being used to resolve to a blank or inactive page.
B. Respondent
Respondent alleges that they own and operate multiple online publishing companies and the disputed domain name was purchased to host a Russian based cryptocurrency news website.
Respondent argues that the words “capital one” means #1 cryptocurrency website regarding various resources related to the overall cryptocurrency news verticle.
Respondent defends that it has already invested over $8,5k in developing the website and is supposed to be launched on July 27th.
C. Additional Submissions
Complainant restate previous arguments. Whilst Respondent affirms that have legitimate interest in the domain name as a publishing company who invested over $8.5 in development. Respondent also affirms that offered to transfer the domain name to Complainant, as long as they compensate the amount paid.
Complainant has registered trademarks for numerous marks around the world that include the name CAPITAL ONE, including in the USA since 1997.
Complainant’s marks are well-known in the financial industry.
Respondent registered the disputed domain name <capitalonecryptocurrency.com> in November, 02, 2017.
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.
First, the Panel notes that Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that it is well clear that Complainant has rights in the CAPITAL ONE mark pursuant to its trademark registrations with the United States Patent and Trademark Office. These registrations evidence Complainant’s use of the mark in commerce since at least 1997. Complainant’s use and registration predate Respondent’s 2017 registration of the disputed domain name.
The Panel agrees that registration with the USPTO suffices to demonstrate a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The disputed domain name is confusingly similar to the Complainant's CAPITAL ONE registered trademark because it incorporates a registered trademark in its entirety and merely adds: (i) the generic words “crypto” and “currency.”, which is related to the business in which the Complainant operates, and (ii) the gTLD “.com”. The Panel agrees that the addition of a generic term does not serve to adequately distinguish Respondent’s domain name from a complainant’s mark.
Likewise, the addition of the gTLD “.com” does not detract from the similarity between the mark and the disputed domain name.
Therefore, the Panel finds the disputed domain name is confusingly similar to the mark in which Complainant has rights.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It is well established that Complainant must only 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.”).
In this case, Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names and is not commonly known by the disputed domain name or any variant of Complainant’s marks.
First, the Panel notes that the publicly available WHOIS does not provide any evidence that Respondent is known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
After analyzing the case, including the content of the websites under the disputed domain names, the Panel notes that there is no evidence that Respondent has any trademark rights related to CAPITAL ONE nor that Respondent provides a bona fide offering of goods or services or that there is legitimate noncommercial or fair use of the disputed domain names.
Therefore, the Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii).
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith, according to the Policy, paragraph 4(a)(iii).
In the present case, the Panel finds that Respondent has intentionally registered the disputed domain name, which is confusingly similar to Complainant’s marks and domain names and could mislead consumers. Based on all the above facts, it is highly unlikely that Respondent was not aware of Complainant’s trademark rights when the disputed domain name was registered.
As a matter of fact, the disputed domain name would be a perfect reproduction of Complainant’s mark, were it not for the addition of the words “crypto” and “currency”, which, as already exposed, are related to the business in which Complainant operates and, thus, are not sufficient to dispel confusion.
Additionally, the Panel verifies that the disputed domain name resolves to an inactive website and notes that the passive holding of the disputed domain name does not prevent a finding of bad faith.
In the absence of any supporting assertions or evidence from Respondent, the Panel also agrees there to be no plausible bona fide use that Respondent could make of the disputed domain name that would not interfere with Complainant's prior rights. As such, the Panel finds Respondent's passive holding of the disputed domain name to amount to bad faith use.
Furthermore, in its response, Respondent affirms that if Complainant wants the disputed domain name, Respondent needs to be compensated for his cost. Under the circumstances of this case, Respondent’s offer to Complainant to transfer the domain names under compensation is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Services, FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).
In view of the above, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith.
Complainant has therefore satisfied the third and final requirement of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonecryptocurrency.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: June, 25, 2018.
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