Capital One Financial Corp. v. Roger Bovee
Claim Number: FA1406001562359
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Roger Bovee (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital-one-credit-card.com>, registered with NETWORK SOLUTIONS, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on June 2, 2014; the National Arbitration Forum received payment on June 2, 2014.
On June 4, 2014, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <capital-one-credit-card.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agree-ment 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 June 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@capital-one-credit-card.com. Also on June 4, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 June 27, 2014, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 is a major financial institution offering a broad spectrum of financial products and services to consumers, small businesses and commercial clients.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for the CAPITAL ONE trademark (including Registry No. 2,065,991, registered May 27, 1997).
Respondent registered the <capital-one-credit-card.com> domain name on January 14, 2014.
The domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
Respondent has not been commonly known by the domain name.
Respondent is not a licensee of Complainant.
Complainant has never authorized Respondent to use its CAPITAL ONE mark.
Respondent uses the domain name to divert Internet customers seeking Com-plainant’s website to a parked webpage.
Respondent has no rights to or legitimate interests in the domain name.
Respondent purchased the domain name with the intent to sell it to Complainant for a profit.
Respondent has offered to sell the domain name to Complainant for $1000.
Respondent’s use of the domain name disrupts Complainant’s business.
The domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the CAPITAL ONE trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <capital-one-credit-card.com> domain name is confusingly similar to Complainant’s CAPITAL ONE trademark. The domain name contains Complainant’s mark in its entirety and simply adds a series of hyphens and the words “credit” and “card,” which together relate to an aspect of Complainant’s business, plus the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the domain name <westfieldshopping.com> confusingly similar to the WESTFIELD mark because the mark was the dominant element of the domain name).
See also 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).
Further see Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007):
…[T]he addition of the generic top-level domain ‘.com’ does
nothing to eliminate the confusing similarity, as a top-level
domain is a requirement for all domain names.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <capital-one-credit-card.com> domain name, that Respondent is not a licensee of Complainant, and that Complainant has never authorized Respondent to use its CAPITAL ONE mark. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Roger Bovee,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <capital-one-credit-card.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respond-ent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, show-ing that that respondent was commonly known by the domain name, and where a UDRP complainant asserted that it did not authorize or license that respondent’s use of its mark).
We next observe that Complainant contends, without objection from Respondent, that the <capital-one-credit-card.com> domain name resolves to a parked web-page, and that Respondent purchased the domain name with the intent to sell it to Complainant for a profit. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel there finding that:
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Re-spondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding, under Policy ¶ 4(a)(ii), that a respondent’s willingness to sell a domain name to a UDRP complainant suggested that that respondent had no rights to or legitimate interests in the domain name).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <capital-one-credit-card.com> domain name, which is confusingly similar to Complainant’s CAPITAL ONE trademark, to seek to profit from the confusion caused among Internet users as to the possibility of Complainant’s affiliation with the domain name demonstrates bad faith in the registration and use of the do-main name. See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000), the panel there finding, under Policy ¶ 4(b)(iv), that a respondent registered and used in bad faith a domain name that was confusingly similar to the mark of a UDRP complainant where that respond-ent used the domain name to profit by attracting Internet users to its website.
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <capital-one-credit-card.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 30, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page