Capital One Financial Corp. v Matthew Krei
Claim Number: FA1407001569979
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Matthew Krei (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonf.com>, registered with ENOM, INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2014; the National Arbitration Forum received payment on July 16, 2014.
On July 17, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <capitalonf.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 July 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@capitalonf.com. Also on July 21, 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 July 21, 2014.
On July 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, either directly or via one of its wholly-owned subsidiaries, owns over 100 pending applications or registrations for the CAPITAL ONE mark all over the world and in the United States.
Complainant owns registrations in the United States for the CAPITAL ONE mark. Complainant provides banking and financial services under these registrations. Complainant also owns registrations for the CAPITAL ONE mark in more than fifteen countries, including Canada, Mexico, Brazil, Austria, India, Monaco and Chile.
Respondent’s disputed domain name <capitalonf.com> is confusingly similar to Complainant’s CAPITAL ONE trademark because Respondent’s domain name is a simple misspelling or typo an Internet user would make when typing in Complainant’s mark. Moreover, the addition of the generic top-level domain “.com” to a domain name is insufficient to distinguish a disputed domain name and a mark.
The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject to this Complaint. Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Complainant has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant. Respondent’s lack of rights or legitimate interests in the disputed domain name is further evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent makes a deliberate attempt to pass off his disputed domain name. Respondent’s website provides links to many of Complainant’s websites, whereby, presumably, Respondent receives some form of monetary gain through the links found throughout the webpage.
The disputed domain name should be considered as having been registered and being used in bad faith. Respondent’s disputed domain name resolves to a web site that uses the CAPITAL ONE trademark in countless locations including as the title to the site. Therefore, Respondent is using CAPITAL ONE as a mark and attempting to pass his site off as being an official Capital One site. Respondent’s web site is not an official Capital One web site and Capital One has not approved or licensed Respondent and is in no way affiliated with Respondent. This use results in a disruption of Complainant’s business through the confusion caused by both the similarity between Complainant’s marks and the disputed domain name, and Respondent’s deliberate attempt to confuse consumers as to the nature of his web site. Additionally, Respondent’s web site provides unverified information about Capital One and some of its services. Respondent’s website provides links to many of Complainant’s websites, whereby, presumably, Respondent receives some form of monetary gain through the links found throughout the webpage.
Respondent uses the disputed domain name for hyperlinks to services competing with those offered under Complaint’s CAPITAL ONE mark. In addition, Respondent registered the domain name with a privacy service, further evidence that the domain was registered in bad faith.
B. Respondent
Respondent responded via an email to the dispute resolution provider stating: “Capital One can have capitalonf.com.”
Complainant has trademark rights in the CAPITAL ONE mark.
Respondent registered the at-issue domain name after Complainant acquired rights in the CAPITAL ONE trademark.
Respondent consents to transfer the at-issue domain name 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.
Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”) Here, since there is a clear indication that Respondent agrees to transfer the at-issue domain name to Complainant, the Panel follows its rational set out in Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Shirlee Cornejo / Universal Export Import Ltd. FA1471116 (Nat. Arb. Forum January 2, 2013), American Petroleum Institute v. Lynn Matthews, FA1507800 (Nat. Arb. Forum, July 30, 2013) and Microsoft Corporation v. Simon Ward / Game Codes Ltd., FA1534229 (Nat. Arb. Forum, January 16, 2014), as well as in other similarly reasoned decisions.
As more fully discussed in the cases cited above, as a necessary prerequisite to Complainant obtaining the relief its requests even where Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. In the instant case, Complainant establishes its rights in the CAPITAL ONE mark through its USPTO trademark registration, as well as other registrations of such mark worldwide. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, Respondent’s <captialonf.com> domain name is constructed by substituting the letter “e” in Complainant’s trademark with an “f” and then appending the generic top-level domain, “.com,” to the resulting string. These changes are insufficient to materially distinguish the domain name from Complainant’s CAPITAL ONE trademark. Therefore, the Panel finds that Respondent’s <captialonf.com> domain name is confusingly similar to Complainant’s CAPITAL ONE trademark under Policy ¶4(a)(i). See Capital One Financial Corp. v. Domain Administrator / Fundacion Private Whois, FA 1550023 (Nat. Arb. Forum April 29, 2014) (finding that Respondent’s domain name is confusingly similar to Complainant’s mark because Respondent’s “domain name consists merely of a common misspelling of the highly distinctive mark, with the addition of the generic Top Level Domain (“gTLD”) “.com.”
In light of the foregoing, the Panel concludes that Respondent’s consent-to-transfer the at-issue domain name to Complainant compels the Panel to transfer the domain name as requested. Furthermore, the Panel finds no basis for including substantive analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in its instant decision.
Having determined that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and having established that Respondent has consented to the relief Complainant requests, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonf.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 30, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page