Capital One Financial Corp. v. Brian Gelinas / Omni Manangement Group, LLC
Claim Number: FA1503001612148
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Brian Gelinas / Omni Manangement Group, LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capitaloneaudit.com> and <caponebankruptcyaudit.com>, registered with GoDaddy.com, 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 Forum electronically on March 30, 2015; the Forum received payment on March 30, 2015.
On March 31, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitaloneaudit.com> and <caponebankruptcyaudit.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2015 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@capitaloneaudit.com, postmaster@caponebankruptcyaudit.com. Also on April 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the CAPITAL ONE trademark to promote its financial products and services to consumers, small businesses and commercial clients.
Complainant holds a registration for the CAPITAL ONE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,442,400, registered June 3, 2008).
Respondent registered the <capitaloneaudit.com> domain name on or about October 19, 2010, and the <caponebankruptcyaudit.com> domain name on or about October 21, 2010.
The domain names are confusingly similar to Complainant’s CAPITAL ONE trademark.
Respondent has not been commonly known by either of the domain names.
Complainant has never authorized Respondent to use its CAPITAL ONE mark in a domain name.
Respondent has not used either of the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain names redirect Internet users seeking Complainant’s website to Respondent’s website, which offers bankruptcy consulting services, presumably for Respondent’s financial gain.
Respondent has no rights to or legitimate interests in either of the contested domain names.
Respondent’s use of the domain names creates a likelihood of confusion among Internet users as to the possibility of Complainant’s association with them.
Respondent knew of Complainant and its rights in the CAPITAL ONE mark when it registered the domain names.
Respondent has engaged in bad faith registration and use of the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) Both of the domain names were registered and are 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 cancelled 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 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 has rights in the CAPITAL ONE trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <capitaloneaudit.com> and <caponebankruptcyaudit.com> domain names are both confusingly similar to Complainant’s CAPITAL ONE trademark. The <capitaloneaudit.com> domain name contains Complainant’s mark in its entirety, adding only the generic term “audit,” which relates to an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” The <caponebankruptcyaudit.com> domain name contains an abbreviated version of Complainant’s registered mark, and merely adds the generic terms “bankruptcy” and “audit,” which together describe an aspect of complainant’s business, plus the gTLD “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> confusingly similar to a UDRP complainant’s Yahoo! mark).
And because every domain name requires a gTLD, the addition of a gTLD to Complainant’s CAPITAL ONE mark is of no consequence to a Policy ¶ 4(a)(i) analysis. See, for example, OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” to the mark of another does not distinguish the resulting domain name from that mark).
Further see Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942):
“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself. . . .”
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a 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) (finding 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 respondent 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 names. 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 names 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 <capitaloneaudit.com> and <caponebankruptcyaudit.com> domain names, and that Complainant has never authorized Respondent to use its CAPITAL ONE trademark. Moreover, the WHOIS information for the each of the domain names identifies the registrant only as “Brian Gelinas / Omni Manangement Group, LLC,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by either of the contested domain names so as to have acquired rights to or legitimate interests in either of them within the meaning of Policy ¶ 4(c)(ii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a UDRP complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, in that each of the domain names redirects Internet users seeking Complainant’s website to Respondent’s website, which offers bankruptcy consulting services, presumably for Respondent’s financial gain. On the facts before us, we agree that Respondent’s employment of the domain names as alleged in the complaint 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). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding, under Policy ¶¶ 4(c)(i)-(iii), that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a UDRP complainant, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <capitaloneaudit.com> and <caponebankruptcyaudit.com> domain names, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain names. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding, under Policy ¶ 4(b)(iii), that a respondent acted in bad faith by employing a domain name that was confusingly similar to the mark of a UDRP complainant to attract Internet users to a website that competed with the business of that complainant).
We are likewise convinced by the evidence that Respondent’s employment of the contested <capitaloneaudit.com> and <caponebankruptcyaudit.com> domain names as alleged in the Complaint, presumably for its commercial gain, creates confusion among Internet users as to the possibility of Complainant’s association with the domain names and their resolving website. Under Policy ¶ 4(b)(iv), this too demonstrates Respondent’s bad faith in the registration and use of the domain names. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003):
As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).
Finally, under this head of the Policy, the evidence shows that Respondent knew of Complainant and its rights in the CAPITAL ONE trademark when it registered the disputed domain names. This is further proof of Respondent’s bad faith in registering the domain names. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration of a domain name which was confusingly similar to the mark of a UDRP complainant, where that respondent was "well-aware of the complainant's YAHOO! mark at the time of [its domain name] registration)."
For these reasons, 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 domain names <capitaloneaudit.com> and <caponebankruptcyaudit.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 6, 2015
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