Capital One Financial Corp. v. Above.com Domain Privacy
Claim Number: FA1403001550024
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone306.com>, registered with Above.com Pty Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2014; the National Arbitration Forum received payment on March 21, 2014.
On March 24, 2014, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <capitalone306.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 March 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 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@capitalone306.com. Also on March 25, 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 April 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, 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. 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 makes the following assertions:
1. Respondent’s domain name, the domain name at issue, is confusingly similar to Complainant’s CAPITAL ONE 360 mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Capital One Financial Corp., is a major financial institution that offers a broad spectrum of financial products and services to consumers, small businesses, and commercial clients.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CAPITAL ONE 360 mark (e.g., Reg. No. 4,401,562, registered September 10, 2013). Respondent’s <capitalone306.com> domain name is confusingly similar to Complainant’s CAPITAL ONE 360 mark.
Respondent should be considered as having no rights or legitimate interests in respect of the domain name. Respondent is not commonly known by the disputed domain name and is using the disputed domain name to display a search engine and “related links”.
The disputed domain name should be considered as having been registered and being used in bad faith. Respondent is using the disputed domain name to display a search engine and “related links”, some of which are owned by Complainant’s competitors.
Respondent registered the <capitalone306.com> domain name on January 15, 2013.
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 is a major financial institution that offers a broad spectrum of financial products and services to consumers, small businesses, and commercial clients and is the owner of trademark registrations with the USPTO for the CAPITAL ONE 360 mark (e.g., Reg. No. 4,401,562, registered September 10, 2013). While Respondent appears to reside in Australia, it is irrelevant under Policy ¶ 4(a)(i) whether Complainant register its mark in the country of Respondent’s residence. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Consequently, Complainant’s registration of the CAPITAL ONE 360 with the USPTO shows rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <capitalone306.com> domain name is confusingly similar to Complainant’s CAPITAL ONE 360 mark. Respondent transposes the numbers “6” and “0” in its disputed domain name. Such transposition of characters in a mark does not differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Respondent’s addition of a generic top-level domain (“gTLD”) “.com” is insufficient to distinguish the disputed domain name from Complainant’s mark. Further, Respondent removes the spaces in Complainant’s CAPITAL ONE 360 mark for the disputed domain name however, omission of spaces and inclusion of a gTLD does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, Respondent’s <capitalone306.com> domain name is confusingly similar to Complainant’s CAPITAL ONE 360 mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the <capitalone306.com> domain name. The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel observes that the WHOIS record lists “Above.com Domain Privacy” as the registrant of the disputed domain name. Complainant has never authorized Respondent to use its CAPITAL ONE 360 mark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel concluded that respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that respondent was commonly known by that domain name, including the WHOIS information as well as complainant’s assertion that it did not authorize or license respondent’s use of its mark in a domain name. Accordingly, based on the WHOIS information and other evidence in the record, the Panel finds that Respondent is not commonly known by the <capitalone306.com> domain name under Policy ¶ 4(c)(ii).
Respondent is using the disputed domain name to display a search engine and “related links”. Respondent’s website provides links to other financial institutions, such as American Express, Visa, MasterCard, and Discover, including some of Complainant’s competitors. The Panel finds that Respondent is using the <capitalone306.com> domain name to provide competing hyperlinks and holds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the disputed domain name to display a search engine and “related links”. Respondent’s webpage lists links to other financial institutions, including American Express, Visa, MasterCard, Discover, and others. Such use of the <capitalone306.com> domain name results in a disruption of Complainant’s legitimate business. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel determined 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).” Therefore, the Panel finds that Respondent’s use of the <capitalone306.com> domain name is disruptive, showing bad faith under Policy ¶ 4(b)(iii).
Respondent’s use of the disputed domain name misleads consumers to Respondent’s website, for which Respondent may profit. Past panels have concluded that a respondent’s use of a domain name to provide competing links shows bad faith use under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Consequently, the Panel finds that Respondent has registered and is using the <capitalone306.com> domain name in bad faith according to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalone306.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 19, 2014
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