Capital One Financial Corp. v. Eric Zhang / Invisible Domains Co
Claim Number: FA1505001617684
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Eric Zhang / Invisible Domains Co (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gmcapitalone.com> and <wwcapitalonebank.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2015; the Forum received payment on May 4, 2015.
On May 04, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gmcapitalone.com> and <wwcapitalonebank.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 May 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@gmcapitalone.com, postmaster@wwcapitalonebank.com. Also on May 6, 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 June 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
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’s Contentions
1. Complainant has registered both the CAPITAL ONE mark (e.g., Reg. No. 3,442,400, registered June 3, 2008), and the CAPITAL ONE BANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,419,972, registered April 29, 2008). Both marks are used on or in connection with the sale of banking and financial services. The <gmcapitalone.com> and <wwcapitalonebank.com> domain names are confusingly similar because they are common misspellings and typos of Complainant’s marks and add the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known as either of the disputed domain names, nor is Respondent a licensee of Complainant. Further, Respondent is using the domain names to host a website displaying a search engine, coupled with links to Complainant’s competitors.
3. Respondent has engaged in bad faith registration and use. Respondent registered the domain name for the purposes of disrupting Complainant’s business, and Respondent is attempting to commercially profit from a likelihood of confusion.
B. Respondent’s Contentions
1. Respondent failed to submit a timely response.
1. Respondent’s <gmcapitalone.com> and <wwcapitalonebank.com> domain names are confusingly similar to Complainant’s CAPITAL ONE BANK mark.
2. Respondent does not have any rights or legitimate interests in the <gmcapitalone.com> and <wwcapitalonebank.com> domain names.
3. Respondent registered or used the <gmcapitalone.com> and <wwcapitalonebank.com> domain names 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:
(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 argues that the <gmcapitalone.com> and <wwcapitalonebank.com> domain names are confusingly similar to the CAPITAL ONE and CAPITAL ONE BANK marks. To support this claim, Complainant argues that both domain names consist of common misspellings and typos of its registered marks and adds the gTLD “.com.” As a general rule, the addition of a gTLD can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Prior panels have also established a confusing similarity where the domain name adds letters and thus consists of a common misspelling of the mark at issue. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Thus, the Panel finds that the disputed domain names consist of common misspellings of the CAPITAL ONE and CAPITAL ONE BANK marks, and it finds that the domain names are confusingly similar.
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.”).
Complainant asserts that Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use Complainant’s marks in domain names. The Panel notes that “Eric Zhang” is listed as the registrant of record for the disputed domain names. The Panel also notes that the record is void of any evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that both of the disputed domain names resolve to a webpage containing hyperlinks to competing services. The Panel notes that the resolving webpage contains hyperlinks reading, among other things, “Accept Credit Card Payments,” “Visa Credit Card,” and “Best Credit Card Offers.” See Compl., at Attached Ex. C. Upon selecting these links, Internet users are taken to a webpage displaying addition links to Complainant’s competitors. See Compl., at Attached Ex. D. Prior panels have found that use of a confusingly similar domain name to host a website containing links to the complainant’s competitors fails to amount to a bona fide offering or a legitimate noncommercial or fair use. 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).”). Thus, the Panel finds that Respondent does not have rights or legitimate interests under the Policy.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. Specifically, Complainant argues that Respondent’s display of hyperlinks to competing services on the resolving webpages is disruptive. The Panel again notes that the resolving webpage contains hyperlinks reading, among other things, “Accept Credit Card Payments,” “Visa Credit Card,” and “Best Credit Card Offers.” See Compl., at Attached Ex. C. Upon selecting these links, Internet users are taken to a webpage displaying additional links to Complainant’s competitors. See Compl., at Attached Ex. D. Prior panels have found that use of a confusingly similar domain name to host a website containing links to the complainant’s competitors can consist of bad faith under Policy ¶ 4(b)(iii). 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)). The Panel finds that Respondent is displaying such links, and it finds bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes that Internet users are likely to be confused as to the source or origin of the disputed domain names, and that Respondent must be profiting in some manner from the aforementioned display of competing hyperlinks. Prior panels have found that use of a domain name to display hyperlinks to competing services, and commercially profiting in the process, consists of bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that Respondent is displaying hyperlinks to competing services, and that Respondent is commercially profiting from a likelihood of confusion, it finds bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmcapitalone.com> and <wwcapitalonebank.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 15, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page