Capital One Financial Corp. v. Milen Radumilo
Claim Number: FA1809001805374
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Milen Radumilo (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital1forex.com>, registered with eNom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2018; the Forum received payment on September 11, 2018.
On September 11, 2018, eNom, LLC confirmed by e-mail to the Forum that the <capital1forex.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 September 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@capital1forex.com. Also on September 14, 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 October 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is a major, financial institution that offers a wide spectrum of financial services to consumers, small businesses, 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 June 3, 2008). Respondent’s <capital1forex.com>[i] domain name is confusingly similar to Complainant’s CAPITAL ONE mark as it contains the mark in its entirety, changing the word “ONE” to the number “1,” adding the generic term “forex,” and appending a “.com” generic top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <capital1forex.com> domain name. Respondent is not authorized or licensed to use Complainant’s CAPTIAL ONE mark and is not commonly known by the domain name.
3. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to resolve to a webpage featuring a search engine and “sponsored listings,” which are links to Complainant and its competitors.
4. Respondent registered and uses the <capital1forex.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by diverting users to the resolving website where it features competing hyperlinks. Furthermore, Respondent registered the domain name with a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CAPITAL ONE mark. Respondent’s domain name is confusingly similar to Complainant’s CAPITAL ONE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <capital1forex.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 has rights in the CAPITAL ONE mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017). Complainant has provided copies of its USPTO registrations for the CAPITAL ONE mark (e.g., Reg. No. 3,442,400, registered June 3, 2008). Thus, the Panel holds that Complainant has sufficiently established rights in the CAPITAL ONE mark per Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <capital1forex.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. Specifically, Complainant argues Respondent incorporates the mark in its entirety while replacing a word with a number, adding a generic term and gTLD. Adding generic terms and a gTLD to a complainant’s mark may not sufficiently mitigate any confusing similarity between the 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).). Additionally, turning a word into a number may also not negate any confusing similarity. See J.P. Commc’ns, Inc. v Mainstream Adver., FA 1270452 (Forum July 11, 2009) (concluding that respondent’s substitution of the word “ten” in the complainant’s TOP TEN WHOLESALE mark for the numeral “10” in the <top10wholesale.com> domain name did not sufficiently distinguish respondent’s domain name from complainant’s mark due to their phonetic similarities). Therefore, Respondent’s <capital1forex.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <capital1forex.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <capital1forex.com> domain name. Specifically, Complainant contends Respondent is not authorized or licensed to use Complainant’s CAPITAL ONE mark nor is commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. Thus, the record now shows that the WHOIS information identifies Respondent as “Milen Radumilo” as the registrant. There is no evidence in the record to show that Respondent has ever been legitimately known by the CAPITAL ONE mark. 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). Complainant alleges, without contradiction, that Respondent has never been legitimately affiliated with Complainant, has never been known by the <capital1forex.com> domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. Accordingly, the Panel may agree that Respondent is not commonly known by the <capital1forex.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <capital1forex.com> domain name as the domain name resolves in a website that contains a search engine and links to services that directly compete with Complainant, presumably to commercially benefit Respondent from pay-per-click fees. Using a domain name identical or substantially similar to a mark of another to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant has shown that Respondent’s <capital1forex.com> domain name resolves to a website containing “sponsored listings” which are links to Complainant and its competitors. Accordingly, the Panel holds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <capital1forex.com> domain name in bad faith because the resolving webpage displays links to Complainant’s competitors. Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii). See 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).”). Complainant has provided a screenshot of the <capital1forex.com> domain name’s resolving website in support of its contentions. Consequently, the Panel holds that Respondent’s competitive disruption of Complainant’s business shows bad faith by Respondent according to Policy ¶ 4(b)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capital1forex.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 15, 2018
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