Capital One Financial Corp. v. Ryan G Foo / PPA Media Services
Claim Number: FA1401001541012
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonebannk.com>, registered with Internet.bs Corp.
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.
The Honourable Neil Anthony Brown QC 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 February 4, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <capitalonebannk.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 February 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 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@capitalonebannk.com. Also on February 5, 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 27, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
a) Complainant is the exclusive owner of the CAPITAL ONE mark which it uses in connection with banking and related financial services. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the CAPITAL ONE mark (Reg. No. 3,442,400 registered Jun. 3, 2008). See Complainant’s Exhibit A: Attachment 1. Complainant also owns the registration for the CAPITAL ONE mark through the Chilean National Institute of Industrial Property Ministry of Economy (“NIPME”) (Reg. No. 573,667 registered Aug. 9, 2000). See Complainant’s Exhibit A: Attachment 2.
b) The <capitalonebannk.com> domain name is confusingly similar to the CAPITAL ONE mark.
c) Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject to this Complaint.
a. Respondent is not commonly known by the disputed domain name. The WHOIS information for the <capitalonebannk.com> domain name does not reflect that Respondent is known the domain, and Complainant has never authorized Respondent to use the CAPITAL ONE mark.
b. Respondent’s lack of rights and legitimate interests is further evidenced by Respondent’s failure to use the <capitalonebannk.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent provides links to financially-related institutions such as American Express, Visa, and Chase as well as other competitors of Complainant’s.
d) The <capitalonebannk.com> domain name should be considered as having been registered and used in bad faith.
a. Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to display third-party links to Complainant’s competitors. This use results in a disruption of Complainant’s business.
b. Respondent intentionally attracts Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. By using a confusingly similar domain name to divert customers who are searching for Complainant but mistakenly come to Respondent’s website instead so that Respondent can profit is illustrative of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of banking and related financial services.
2. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for CAPITAL ONE (Reg. No. 3,442,400 registered Jun. 3, 2008) and other trademarks registered with USPTO for CAPITAL ONE. Complainant also owns the registration for the CAPITAL ONE mark through the Chilean National Institute of Industrial Property Ministry of Economy (“NIPME”) (Reg. No. 573,667 registered Aug. 9, 2000).
3. The <capitalonebannk.com> domain name was registered on August 27, 2008. Respondent has used the disputed domain name to divert Internet customers seeking Complainant’s website to a website displaying third-party links to Complainant’s competitors, thereby disrupting Complainant’s business.
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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant asserts that it is the exclusive owner of the CAPITAL ONE mark which it uses in connection with banking and related financial services. Complainant is the owner of the USPTO registration for the CAPITAL ONE mark (Reg. No. 3,442,400 registered Jun. 3, 2008). See Complainant’s Exhibit A: Attachment 1. Complainant also demonstrates that it owns the registration for the CAPITAL ONE mark through the NIPME (Reg. No. 573,667 registered Aug. 9, 2000). See Complainant’s Exhibit A: Attachment 2. Panels have held that registration of a mark with a federal trademark authority is sufficient evidence of having rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CAPITAL ONE mark. Complainant contends that Respondent’s <capitalonebannk.com> domain name is confusingly similar to the CAPITAL ONE mark. The Panel notes that Complainant adds the misspelled descriptive term “bank” (spelled “bannk”) and the generic top-level domain (“gTLD”) “.com” and omits the spacing in the disputed domain name. Panels have found that such changes fail to create a meaningful distinction between the mark and a disputed domain name. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL 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)). Therefore, the Panel decides that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take and use in a domain name Complainant’s CAPITAL ONE trademark and add the word ‘bannk’, which is clearly an incorrect spelling of the word ‘bank’, thus giving the false impression that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant dealing with banking;
(b) Respondent has then used the domain name to resolve to a website displaying third-party links to Complainant’s competitors, thereby disrupting Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant asserts that Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant notes that the WHOIS information for the <capitalonebannk.com> domain name does not reflect that Respondent is known by the domain name, and Complainant has never authorized Respondent to use the CAPITAL ONE mark. The Panel notes that the WHOIS record for the disputed domain name lists “Ryan G Foo / PPA Media Services” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii);
(e) Complainant contends that Respondent’s lack of rights and legitimate interests is further evidenced by Respondent’s failure to use the <capitalonebannk.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Respondent provides links to financially-related institutions such as American Express, Visa, and Chase as well as other competitors of Complainant’s. Panels have found that the use of a domain name to host a directory website of competing link is not a means to establish rights or legitimate interests. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)). Therefore, the Panel finds that Respondent’s use of the <capitalonebannk.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that the <capitalonebannk.com> domain name should be considered as having been registered and used in bad faith. Complainant asserts that Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to display third-party links to Complainant’s competitors, and Complainant argues that this use results in a disruption of Complainant’s business. As the Panel agrees that the registration and use of the <capitalonebannk.com> domain name was meant to be disruptive to Complainant’s business, the Panel finds bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Secondly, Complainant asserts that Respondent intentionally attracts Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant suggests that Respondent is using a confusingly similar domain name to divert customers who are searching for Complainant, taking the customer to Respondent’s website instead so that Respondent can profit through advertising revenues. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes. Similarly, the Panel finds that Respondent registered and is using the <capitalonebannk.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CAPITAL ONE mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonebannk.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 6, 2014
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