Capital One Financial Corp. v. Gina Cinque / Captive Media
Claim Number: FA1401001541001
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Gina Cinque / Captive Media (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonemoney.com>, registered with Domain.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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2014; the National Arbitration Forum received payment on January 28, 2014.
On January 28, 2014, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <capitalonemoney.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 29, 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@capitalonemoney.com. Also on January 29, 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.
A timely Response was received and determined to be complete on February 3, 2014.
On February 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Capital One Financial Corp. (hereinafter “Complainant”), contends Complainant is a major financial institution that was founded in 1988. Complainant helped pioneer the mass marketing of credit cards in the early 1990s, by offering a broad spectrum of financial products and services. Complainant has continuously used the CAPITAL ONE mark since the company’s inception. Complainant owns numerous registrations for the CAPITAL ONE mark in countries worldwide including with the United States Patent and Trademark Office (“USPTO”), USPTO (E.g., Reg. No. 1,992,626 registered August 13, 1996); Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA469,123 registered January 21, 1997); Mexican Institute of Industrial Property (“MIIP”) (Reg. No. 834,939 registered May 31, 2004).
Respondent’s <capitalonemoney.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. Respondent’s disputed domain name adds the generic term “money” and the generic top-level domain “gTLD” “.com” to Complainant’s CAPITAL ONE mark. Respondent has no rights or legitimate interests in the <capitalonemoney.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has never authorized Respondent to use its CAPITAL ONE mark in any way. Complainant further states that the WHOIS information lists “Gina Cinque” as registrant of the disputed domain name. Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name diverts Internet users who are looking for Complainant’s website to Respondent’s website for pecuniary gain.
Respondent registered and is using the <capitalonemoney.com> domain name in bad faith. Respondent’s use of the disputed domain name to divert Internet users to a website seeking to provide lodging services to the airline industry disrupts Complainant’s business. Respondent uses the disputed domain name to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s CAPITAL ONE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
B. Respondent
Respondent Gina Cinque / Captive Media (hereinafter “Respondent”), does not deny any of Complainant’s contentions. Respondent contends Respondent’s hosting company placed old content on the website resolving from the disputed domain name without Respondent’s knowledge or consent. Respondent never authorized the domain to go live, and has since contacted the hosting company to park the domain name. Respondent states that it is willing to sell the <capitalonemoney.com> domain name to Complainant.
Complainant has established each of the elements of Paragraph 4(a) of the Policy that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests with respect to the domain name and that the domain name has been registered and is being used in bad faith, as such, the domain name shall be transferred to Complainant.
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.
Complainant contends that its business is a major financial institution that was founded in 1988. Complainant states that it helped pioneer the mass marketing of credit cards in the early 1990s, by offering a broad spectrum of financial products and services. Complainant also asserts that it has continuously used the CAPITAL ONE mark since the company’s inception. Complainant claims it has rights in the CAPITAL ONE mark by providing evidence of its numerous registrations for the CAPITAL ONE mark in countries worldwide including registrations with the USPTO, CIPO, and MIIP. See USPTO (E.g., Reg. No. 1,992,626 registered August 13, 1996); CIPO (e.g., Reg. No. TMA469,123 registered January 21, 1997); MIIP (e.g., Reg. No. 834,939 registered May 31, 2004). Prior panels have concluded that evidence of a registration for a trademark with a recognized trademark authority is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel concludes that Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <capitalonemoney.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i). Complainant also argues that Respondent’s disputed domain name adds the generic term “money” and the “gTLD” “.com” to Complainant’s CAPITAL ONE mark. Respondent removes the space in Complainant’s mark between the word ”CAPITAL” and “ONE.” Panels have routinely found that variations such as adding words, removing spaces and adding a gTLD are insufficient variations that do not differentiate a disputed domain name from a registered mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also 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)). The Panel concludes that Repsondent’s <capitalonemoney.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant must first 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 (Nat. Arb. 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 (Nat. Arb. Forum Sept. 25, 2006).
Complainant argues that Respondent has no rights or legitimate interests in the <capitalonemoney.com> domain name. Complainant claims that Respondent is not commonly known by the disputed domain name and that Complainant has never authorized Respondent to use its CAPITAL ONE mark in any way. Complainant further states that the WHOIS information lists “Gina Cinque” as registrant of the disputed domain name. Prior panels have long held that a respondent is not commonly known by a disputed domain name where the WHOIS information as well as other information on the record do not indicate that respondent is commonly known by the domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). Respondent is not commonly known by the <capitalonemoney.com> domain name under Policy ¶ 4(c)(ii).
Complainant additionally claims that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <capitalonemoney.com> domain name. Complainant asserts that Respondent’s disputed domain name diverts Internet users who are looking for Complainant’s website to Respondent’s website for pecuniary gain. UDRP panels have found that using a disputed domain name to resolve to a website unrelated to a complainant or complainant’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant asserts that Respondent registered and is using the <capitalonemoney.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant claims that Respondent’s use of the disputed domain name diverts Internet users to a website seeking to provide lodging services to the airline industry, thus disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii), and the Panel agrees.
Complainant claims that Respondent uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant explains that respondent uses the confusingly similar <capitalonemoney.com> domain name to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s CAPITAL ONE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The domain name is currently being used to promote an unrelated travel-oriented business. See Complainant’s Ex. C. Prior panels have concluded that using a domain name fully incorporating a complainant’s mark, to resolve to a website promoting Respondent’s website indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Capital One Financial Corporations and Capital One Bank v. Spider Webs, LTD., FA 0098830 (Nat. Arb. Forum Sept. 28, 2001) (“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 also Nike Inc. v. Dias, FA 0135016 (Nat. Arb. Forum Jan. 7, 2002) (“In choosing to register a domain name which incorporates the NIKE mark in its entirety, and then capitalizing on the likelihood of confusion that would result from association itself with the mark, Respondent registered and used the infringing domain name in bad faith under Policy ¶ 4(b)(iv).”). The Panel concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent alleges that it is not responsible for the content featured on the website resolving from the <capitalonemoney.com> domain name. Prior panels have found that it is ultimately the respondent who is responsible for how its domain name is used even if the content was generated by the parking or hosting company. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”). Respondent is responsible for the content featured on the website resolving from the <capitalonemoney.com> domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonemoney.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: February 20, 2014
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