Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd
Claim Number: FA1412001592736
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia. Respondent is DN Manager / Whois-Privacy.Net Ltd (“Respondent”), Vanuatu.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acapitalone.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 1, 2014; the National Arbitration Forum received payment December 1, 2014.
On December 2, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <acapitalone.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd h verified that Respondent is bound by the Fabulous.com Pty Ltd registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@acapitalone.com. Also on December 3, 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 December 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this Proceeding:
Complainant uses CAPITALONE.COM to promote and market its financial and banking services to consumers around the world. The CAPITALONE.COM mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,075,171, registered July 1, 1997). The <acapitalone.com> domain name is confusingly similar to the mark because it merely adds the letter “a.”
Respondent has no rights to or legitimate interests in the <acapitalone.com> domain name. Respondent has never been commonly known by this <acapitalone.com> domain name. Further, the <acapitalone.com> domain name is being used to promote links and other advertisements that are competing with the CAPITALONE.COM mark.
Respondent registered and is using the <acapitalone.com> domain name in bad faith. Respondent’s use of the <acapitalone.com> domain name is disrupting Complainant’s business. The promotion of competing links on the <acapitalone.com> domain name’s website is suggestive of Respondent’s intent to profit from a likelihood of confusion.
Respondent made the following responses in this Proceeding:
Respondent did not file a response.
The Panel notes that Respondent registered the <acapitalone.com> domain name October 20, 2005.
Complainant established that it has rights to and legitimate interests in the disputed domain name.
Respondent has no such rights or legitimate interests.
Respondent registered and used a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses CAPITALONE.COM to promote and market its financial and banking services to consumers around the world. The CAPITALONE.COM mark is registered with the USPTO (e.g., Reg. No. 2,075,171, registered July 1, 1997). The Panel finds that this registration satisfies the Policy ¶ 4(a)(i) required showing of rights in a mark. See 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).”).
Complainant argues that the <acapitalone.com> domain name is confusingly similar to the mark because it merely adds the letter “a.” The Panel agrees that the mere single-character addition to this trademark is not sufficient to avoid a finding of Policy ¶ 4(a)(i) confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant argues that Respondent has never been commonly known by this <acapitalone.com> domain name. The Panel notes that “DN Manager” is listed as the registrant of record in the WHOIS archives and agrees that no basis is shown in the record for finding that Respondent is commonly known by this domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims that the <acapitalone.com> domain name is being used to promote links and other advertisements that are competing with the CAPITALONE.COM mark. The Panel notes that the domain name resolves to a website promoting links to Complainant’s business, Complainant’s competitors, and other credit-related services. See Compl., at Attached Exs. C–D. The Panel finds that hosting advertising is neither a Policy ¶ 4(c)(i) bona fide offering of goods or service, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant also argues that Respondent’s use of the <acapitalone.com> domain name is disrupting Complainant’s business. See Compl., at Attached Exs. C–D. The Panel agrees that Respondent is using the domain name to send users to competing offers, conduct that supports findings of Policy ¶ 4(b)(iii) bad faith through competitive disruption. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant claims that Respondent’s promotion of competing links on the <acapitalone.com> domain name’s website is suggestive of Respondent’s intent to profit from a likelihood of confusion. This Panel finds that Respondent uses the domain name is, as seen in Exhibit C, to host advertisements that send users to various credit card offers. This Panel finds that Respondent profits from the likelihood that Internet users will approach the domain name believing the content is legitimate and associated with Complainant—allowing Respondent to collect advertising revenue. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
This Panel further makes an inference that given the familiarity of the Capital One mark, coupled with Respondent’s use of the disputed domain, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acapitalone.com> domain name be TRANSFERRED from Respondent to Complainant
Hon. Carolyn Marks Johnson, Panelist.
Dated: January 9, 2015
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