Capital One Financial Corp. v. barbara shurtleff
Claim Number: FA1401001540669
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is barbara shurtleff (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capitalone-investments.com>, <capitalone-investments.info>, <capitalone-investments.net>, and <capitalone-investments.org>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2014; the National Arbitration Forum received payment on January 24, 2014.
On January 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <capitalone-investments.com>, <capitalone-investments.info>, <capitalone-investments.net>, and <capitalone-investments.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 January 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2014 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@capitalone-investments.com, postmaster@capitalone-investments.info, postmaster@capitalone-investments.net, and postmaster@capitalone-investments.org. Also on January 28, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Capital One Financial Corp., is a major financial institution headquartered in McLean, Virginia. Complainant offers a broad spectrum of financial products and services to consumers, small businesses, and commercial clients.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CAPITAL ONE mark (e.g., Reg. No. 1,992,626, registered August 13, 1996).
3. Respondent’s <capitalone-investments.com>, <capitalone-investments.info>, <capitalone-investments.net>, and <capitalone-investments.org> domain names are confusingly similar to Complainant’s CAPITAL ONE mark.
4. Respondent is not commonly known by the disputed domain names.
5. Respondent’s <capitalone-investments.net> and <capitalone-investments.org> domain names resolve to parked web pages featuring links to third-party websites, some of which are owned by Complainant’s competitors.
6. Respondent’s <capitalone-investments.com> and <capitalone-investments.info> domain names contain no content.
7. Respondent is using the <capitalone-investments.com> and <capitalone-investments.info> domain names to resolve to a blank or inactive page.
8. Respondent registered the <capitalone-investments.com>, <capitalone-investments.info>, <capitalone-investments.net>, and <capitalone-investments.org> domain names on April 30, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CAPITAL ONE mark. Respondent’s domain names are confusingly similar to Complainant’s CAPITAL ONE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <capitalone-investments.com>, <capitalone-investments.info>, <capitalone-investments.net>, and <capitalone-investments.org> domain names, and that Respondent registered and uses the domain names 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(e), 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 (Nat. Arb. 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 asserts that it is a major financial institution headquartered in McLean, Virginia. Complainant contends that it offers a broad spectrum of financial products and services to consumers, small businesses, and commercial clients. Complainant has shown that it is the owner of trademark registrations with the USPTO for the CAPITAL ONE mark (e.g., Reg. No. 1,992,626, registered August 13, 1996). The Panel concludes that Complainant’s registration of the CAPITAL ONE mark with the USPTO sufficiently evidences its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <capitalone-investments.com>, <capitalone-investments.info>, <capitalone-investments.net>, and <capitalone-investments.org> domain names are confusingly similar to Complainant’s CAPITAL ONE mark. Complainant contends that the addition of the generic term “investments,” and the gTLD “.com,” “.info,” “.net,” or “.org” to Complainant’s mark in forming a domain name is insufficient to distinguish a disputed domain name and the mark. The Panel agrees that Respondent’s inclusion of a generic term and a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
The Panel further holds that Respondent’s elimination of spaces in the marks does not negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Lastly, Respondent adds a hyphen after Complainant’s CAPITAL ONE mark in each of its disputed domain names. Respondent’s addition of a hyphen to Complainant’s mark does not distinguish Respondent’s domain names from Complainant’s mark according to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel finds that Respondent’s <capitalone-investments.com>, <capitalone-investments.info>, <capitalone-investments.net>, and <capitalone-investments.org> domain names are confusingly similar to Complainant’s CAPITAL ONE mark pursuant to 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 disputed domain names. 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 (Nat. Arb. 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 contends that Respondent is not commonly known by the <capitalone-investments.com>, <capitalone-investments.info>, <capitalone-investments.net>, or <capitalone-investments.org> domain names. Complainant asserts that the WHOIS information for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. The WHOIS record lists “barbara shurtleff” as the registrant of the disputed domain names. Complainant alleges that it has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, and that Respondent is not a licensee of Complainant. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Because Respondent has presented no evidence to the contrary, the Panel finds that Respondent is not commonly known by the <capitalone-investments.com>, <capitalone-investments.info>, <capitalone-investments.net>, or <capitalone-investments.org> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s <capitalone-investments.net> and <capitalone-investments.org> domain names resolve to parked web pages featuring links to third-party websites, some of which are owned by Complainant’s competitors. Respondent’s <capitalone-investments.net> and <capitalone-investments.org> domain names resolve to competing hyperlink directories featuring links such as “Capital One Official Site,” “3 Bureau Report $12.95,” “$500 to $5,000 Loans Fast,” and more. A respondent’s use of a disputed domain name to offer competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Consequently, the Panel determines that Respondent is not using the <capitalone-investments.net> or <capitalone-investments.org> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent’s <capitalone-investments.com> and <capitalone-investments.info> domain names resolve to parked webpages featuring links to unrelated businesses. Respondent’s use of the <capitalone-investments.com> and <capitalone-investments.info> domain names to provide such links is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Capital One Financial Corp. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 487712 (Nat. Arb. Forum April 8, 2013) (finding that Respondent’s use of the <capitalonecreditcard.com> domain name to present site visitors with a variety of links to third parties “is neither a Policy¶ 4(c)(i) bona fide offering of goods or services, nor a Policy¶ 4(c)(iii) legitimate noncommercial or fair use.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is using the <capitalone-investments.net>, <capitalone-investments.org>, <capitalone-investments.com>, and <capitalone-investments.info> domain names to display parked web pages that feature sponsored links to third-party websites, some of which are owned by Complainant’s competitors. The Panel observes that Respondent’s disputed domain names resolve to websites containing links titled “Capital One Official Site,” “3 Bureau Report $12.95,” “Local Banks Directory,” and more. Complainant asserts that this use results in a disruption of Complainant’s business. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel held that “The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).” Thus, it is reasonable to infer that Respondent’s use of the <capitalone-investments.net>, <capitalone-investments.org>, <capitalone-investments.com>, and <capitalone-investments.info> domain names disrupts Complainant’s legitimate business, and therefore the Panel holds that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent’s misuse of Complainant’s marks constitutes bad faith for yet another reason. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found that “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” Thus, the Panel finds that Respondent’s use of the domain names to attract consumers for commercial gain is demonstrative of bad faith use and registration under Policy ¶ 4(b)(iv).
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 <capitalone-investments.com>, <capitalone-investments.info>, <capitalone-investments.net>, and <capitalone-investments.org> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 3, 2014
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