DECISION

Capital One Financial Corporation and Capital One Bank v. Spider Webs, LTD.

Claim Number: FA0108000098830

PARTIES

Complainant is Capital One Financial Corporation and Capital One Bank, Falls Church, VA (“Complainant”) represented by Mark S. Sommers, of Finnegan, Henderson, Farabow, Garrett & Dunner. Respondent is Spider Webs, LTD., Houston, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <capitolonebank.com>, registered with Network Solutions, Inc.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 10, 2001; the Forum received a hard copy of the Complaint on August 13, 2001.

On August 13, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <capitolonebank.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 2001 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@capitolonebank.com 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 September 24, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.” 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The domain name <capitolonebank.com> is confusingly similar to Capital One’s federally registered and famous trademark CAPITAL ONE and its valuable and well-known trade name CAPITAL ONE BANK.

2. Respondent does not have rights or a legitimate interest in the domain name because Respondent uses a common misspelling of the CAPITAL ONE mark and CAPITAL ONE BANK trade name and Respondent is not a bank. Respondent is not, and has never been, affiliated or associated with Capital One. Respondent is not, and has never been, authorized by or a licensee of Capital One to use the CAPITAL ONE mark or the CAPITAL ONE BANK trade name.

3. Respondent’s registration and use of the Domain Name meets the bad faith requirement described in Paragraph 4(a) of the UDRP.

B. Respondent

No Response was received.

FINDINGS

Capital One is one of the top ten issuers of MASTERCARD and VISA credit cards in the United States. Capital One maintains over 33 million credit card customers throughout the United States alone, and manages assets totaling over $27 billion.

Capital One is the owner of numerous United States trademark registrations for its CAPITAL ONE mark, including the following representative examples (printouts of which from the United States Patent & Trademark Office’s website are attached as Exhibit 5):

a. Registration No. 2,065,992, first used October 24, 1994, issued May 27, 1997, covering financial services, namely, secured and unsecured consumer installment lending; real estate financing, namely mortgage lending; and home equity loans, in International Class 36.

b. Registration No. 1,992,626, first used December 16, 1994, issued August 13, 1996, covering financial services, namely, consumer and commercial banking; processing, funding, underwriting, and administering annuities; financial card, debit card, and credit card services, namely, processing, underwriting, using, servicing, and administering credit cards, chip cards, debit cards, corporate cards, and secured cards; electronic funds transfer provided through automated teller machines; investment consultation, namely, financial and investment planning and consulting; consumer and commercial leasing financing; real estate financing, namely, mortgage lending, home equity loans, and commercial equity financing, in International Class 36.

c. Registration No. 2,065,991, first used December 16, 1994, issued May 27, 1997, covering credit card services, namely, processing, underwriting, issuing, servicing and administering credit cards and secured cards, in International Class 36.

Capital One is also the owner of United States Registration No. 2,075,171 for the mark <capitalone.com>, first used November 19, 1995, issued July 1, 1997, covering the provision of financial information by means of a global communication network in International Class 36.

Respondent registered the disputed domain name on August 27, 1999.

Respondent uses the disputed domain name to frame its website located at <spintopic.com>, which purportedly provides consumer complaint forums discussing a variety of topics, including banking.

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

The <capitolonebank.com> domain name combines the misspelling of the CAPITAL ONE mark, owned by Complainant, with the generic word "bank" describing the type of services offered by Complainant. The addition of a generic word to a misspelling of Complainant’s mark makes the <capitolonebank.com> domain name confusingly similar to Complainant’s famous mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent is not a licensee or in any way authorized to use Complainant’s CAPITAL ONE mark. Respondent only offers services under the name <spintopic.com>, therefore, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

Additionally, Respondent is intentionally attempting to divert Internet consumers to its own site, and such use is not a bona fide use under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

Therefore, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

There is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website and services. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name <capitolonebank.com> be transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: September 28, 2001