Capital One Financial Corporation and
Capital One Bank v. Austin Howel
Claim
Number: FA0406000289304
Complainant is Capital One Financial Corporation and Capital One Bank (“Complainant”), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC,
20005. Respondent is Austin Howel (“Respondent”), 1520
Hammersly Avenue, Bronx, NY, 10469.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <capitalonebank.biz>, registered with Network
Solutions Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge, she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically June 24, 2004; the Forum received a hard copy of the Complaint June
25, 2004.
On
June 25, 2004, Network Solutions Inc. confirmed by e-mail to the Forum that the
domain name <capitalonebank.biz> is registered with Network
Solutions Inc. and that Respondent is the current registrant of the name. Network
Solutions Inc. verified that Respondent is bound by the Network Solutions Inc. registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
June 28, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 19, 2004, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@capitalonebank.biz by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 28, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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."
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.
There are two
named Complainants in this case:
Capital One Financial Corporation (“COFC”) and Capital One Bank
(“COB”). Rule 3(a) states: “Any person or entity may initiate an administrative
proceeding by submitting a complaint.”
The Panel has been asked to rule on the question of whether Complainants
can be considered as one entity for the purposes of this Complaint. A fair
reading of the language of the rule suggests that a Complainant must be one
entity. However, two Complainants may be permitted to submit a single Complaint
where they demonstrate a link between themselves such as a relationship
involving a license, a partnership or an affiliation that would tend to
establish the reason for the parties’ bringing a Complaint as one entity. Here, Complainant COB is a wholly owned
subsidiary of COFC. In these
circumstances, the Panel finds that COFC and COB established a sufficient link
between them to be treated as one entity for the purposes of this
Complaint. See See Int’l
Olympic Committee v. Boyden, FA 201977 (Nat. Arb. Forum Dec. 19, 2003) (“It is permissible for two Complainants to submit
a single Complaint if they can demonstrate a link between the two entities such
as a relationship involving a license, a partnership or an affiliation that
would establish the reason for the parties bringing the Complaint as one
entity.”).
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<capitalonebank.biz>, is confusingly similar to Complainant’s
CAPITAL ONE mark.
2. Respondent has no rights to or legitimate
interests in the <capitalonebank.biz> domain name.
3. Respondent registered and used the <capitalonebank.biz>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Capital One, is one of the nation’s leading and best known financial
institutions. Complainant offers a
range of financial services in connection with the CAPITAL ONE mark, including
credit cards, real estate financing, installment loans, savings and investments
in certificates of deposit and money market funds, and automobile
financing. Complainant maintains over
47 million customers, manages loans totaling $70.2 billion, and employs over
17,000 associates worldwide.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the CAPITAL ONE mark (Reg. No. 2,065,992 issued May 27,
1997, Reg. No. 1,992,626 issued August 13, 1996, Reg. No. 2,065,991 issued May
27, 1997 and Reg. No. 2,727,453 issued June 17, 2003). Complainant has been using the CAPITAL ONE
mark since as early as October 1994.
Complainant’s
main website, which provides real-time account servicing and information on
Complainant and its various products and services, can be accessed at the
<capitalone.com> domain name.
Respondent
registered the disputed domain name, <capitalonebank.biz>, March
23, 2004, and is using the domain name in connection with an Internet
“phishing” scam, a practice that is intended to defraud consumers into
revealing personal and proprietary information. Respondent’s website included numerous copied images from
Complainant’s website requesting information from Complainant’s customers. Respondent’s website also contained links
to Complainant’s website. Currently,
the domain name is being used to display the Anti-Phishing Working Group’s
website.
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."
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(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant
established using extrinsic proof in this proceeding that it has rights in the
CAPITAL ONE mark through registration with the United States Patent and
Trademark Office and through continued use of its mark in commerce over the
last ten years. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.).
Complainant
alleges that the <capitalonebank.biz> domain name is confusingly
similar to Complainant’s CAPITAL ONE mark.
The only differences are the additions of the term “bank” and the
generic top-level domain (“gTLD”), “.biz,” which do not significantly
distinguish the domain name from the mark.
See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which Complainant is engaged,
does not take the disputed domain name out of the realm of confusing
similarity); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has rights to and legitimate interests in the CAPITAL ONE
mark. Complainant alleges that
Respondent has no such rights to or legitimate interests in the domain name
that contains in its entirety Complainant’s protected mark. Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and
legitimate interests in the disputed domain name because the burden shifts to
Respondent to show such rights or legitimate interests once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent never
submitted a response or provided the Panel with evidence to suggest otherwise).
In addition, the
domain name registered by Respondent, <capitalonebank.biz>, is
confusingly similar to Complainant’s mark and it is being used to redirect
Internet users to a website that imitates Complainant’s credit application
website and is being used to fraudently acquire personal information from Complainant’s
clients. Respondent’s use of the domain
name does not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Am. Int’l Group, Inc.
v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off
as Complainant online, through wholesale copying of Complainant’s website,
Respondent had no rights or legitimate interests in the disputed domain name); see
also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar.
13, 2002) (stating that where Respondent copied Complainant’s website in order
to steal account information from Complainant’s customers, that Respondent’s
“exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH
mark to aid in its illegal activities is prima facie evidence of a lack
of rights and legitimate interests in the disputed domain name”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <capitalonebank.biz>
domain name. Respondent is not licensed
or authorized to register or use a domain name that incorporates Complainant’s
CAPITAL ONE mark. Therefore, the Panel
concludes that Respondent lacks rights and legitimate interests in the domain
name pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG
v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges
that Respondent registered and used the domain name in bad faith. The <capitalonebank.biz> domain
name is confusingly similar to Complainant’s mark, it is being used to redirect
Internet users to a website that imitates Complainant’s credit application
website, and it is being used to fraudently acquire personal information from
Complainant’s clients. Respondent’s use
of the domain name supports findings of bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons,
FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of
<monsantos.com> to misrepresent itself as Complainant and to provide
misleading information to the public supported a finding of bad faith); see
also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding
that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave
consumers the impression that Complainant endorsed and sponsored Respondent’s
website).
Further,
Respondent presumably benefits commercially from using a domain name that is
confusingly similar to Complainant’s mark.
Such gain also supports findings of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv) because it creates a likelihood of confusion with
Complainant as to the source, sponsorship, affiliation or endorsement of the
website. See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv) through Respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using Complainant’s famous marks and likeness); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May
31, 2002) (“Respondent is using the domain name at issue to resolve to a
website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge
of Complainant’s business and trademarks. The Panel finds that this conduct is
that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonebank.biz>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 11, 2004
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