Capital One Financial Corp. v. ADRIAN CLARKE / ASIAPACIFIC
Claim Number: FA1507001628768
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is ADRIAN CLARKE / ASIAPACIFIC (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quicksilvercapitalone.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2015; the Forum received payment on July 14, 2015.
On July 14, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <quicksilvercapitalone.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 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@quicksilvercapitalone.com. Also on July 16, 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 August 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CAPITAL ONE trademark (e.g., Reg. No. 3,442,400, registered June 3, 2008), as well as the QUICKSILVER trademark (e.g., Reg. No. 3,780,081, registered Apr. 27, 2010). The marks are used in connection with the sale of banking and financial services. The <quicksilvercapitalone.com> domain name is confusingly similar to both the CAPITALONE and QUICKSILVER trademarks because the domain name simply combines both trademarks and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage featuring hyperlinks to Complainant’s own website as well as the websites of some of Complainant’s competitors. Also, Respondent is attempting to pass itself off as Complainant.
Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business by displaying competing hyperlinks on the resolving webpage. Respondent is also attempting to commercially profit from a likelihood of confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of providing banking and financial services.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CAPITAL ONE trademark (e.g., Reg. No. 3,442,400, registered June 3, 2008), as well as the QUICKSILVER trademark (e.g., Reg. No. 3,780,081, registered Apr. 27, 2010).
3. Respondent registered the disputed <quicksilvercapitalone.com> domain name on January 28, 2015.
4. Respondent has used the domain name to link to a webpage featuring hyperlinks to Complainant’s own website as well as the websites of some of Complainant’s competitors and Respondent is attempting to pass itself off as 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.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits and has adduced evidence that the Panel accepts to show that Complainant owns trademark registrations with the USPTO for the CAPITAL ONE trademark (e.g., Reg. No. 3,442,400, registered June 3, 2008), as well as the QUICKSILVER trademark (e.g., Reg. No. 3,780,081, registered Apr. 27, 2010). The marks are used in connection with the sale of banking and financial services. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s marks. Complainant argues that the <quicksilvercapitalone.com> domain name is confusingly similar to both the CAPITALONE and QUICKSILVER trademarks. Complainant notes that the domain name simply combines both trademarks and adds the gTLD “.com.” As a general rule, the gTLD “.com” can never distinguish a domain name from the trademark at issue. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Also, prior panels have established a confusing similarity where the respondent has created a domain name by combining two trademarks in which the complainant has rights. See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks). Thus, the Panel finds that the <quicksilvercapitalone.com> domain name is confusingly similar to both the CAPITAL ONE and QUICKSILVER trademarks.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CAPITAL ONE and QUICKSILVER trademarks and to use them in its domain name which is confusingly similar to the marks;
(b) Respondent registered the disputed domain name on January 28, 2015;
(c) Respondent has used the disputed domain name to link to a webpage featuring hyperlinks to Complainant’s own website as well as the websites of some of Complainant’s competitors and Respondent is attempting to pass itself off as Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow it to use the CAPITAL ONE or QUICKSILVER trademarks in domain names. The Panel notes that “ADRIAN CLARKE” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name 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);
(f) Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this argument, Complainant submits that the domain name resolves to a webpage featuring hyperlinks to Complainant’s own website, as well as hyperlinks to the websites of some of Complainant’s competitors. The Panel notes that the resolving webpage contains links that read “Capital One Credit Cards” and “The Capital one Quicksilver card,” as well as additional links leading to the banking and financial services of Bank of America, Discover, Chase, Citi Bank, and Barclaycard Rewards. See Compl., at Attached Ex. C-D. In the past, panels have declined to award a respondent rights under Policy ¶¶ 4(c)(i) and (iii) where the domain name is used to display hyperlinks that lead to the websites of the complainant’s competitors. 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).”). As the Panel finds that Respondent is using the domain name to display hyperlinks to Complainant’s competitors, it declines to find that Respondent has rights under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant also argues that Respondent is attempting to pass itself off as Complainant. Complainant notes that the resolving webpage contains various images of both the CAPITAL ONE and QUICKSILVER trademarks. Further, Complainant claims that the domain name provides information related to Complainant and the services it offers. The Panel notes that the resolving webpage does contain images of both trademarks, along with information related to various types of credit cards that Complainant offers its customers. See Compl., at Attached Ex. C. Prior panels have found that attempts at passing oneself off as the complainant cannot vest rights or legitimate interests in that respondent. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). As the Panel finds that Respondent is trying to pass itself off as Complainant, it finds that Respondent does not have rights under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Specifically, Complainant contends that the display of competing hyperlinks on the resolving webpage is most disruptive. The Panel again notes that the resolving webpage contains links leading to the banking and financial services of Bank of America, Discover, Chase, Citi Bank, and Barclaycard Rewards. See Compl., at Attached Ex. D. Past panels have found bad faith under Policy ¶ 4(b)(iii) where the respondent used the domain name to display competing hyperlinks. 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)). As the Panel finds that Respondent is using the domain name to display competing hyperlinks, it finds bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant submits that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to profit commercially from a likelihood of confusion. Complainant’s argument in favor of the presence of a likelihood of confusion is two-fold. First, Complainant argues that Respondent is trying to pass itself off as Complainant by posting information about Complainant’s services as well as images of the CAPITAL ONE and QUICKSILVER trademarks on the resolving webpage. See Compl., at Attached Ex. C. Second, Complainant argues that the display of competing hyperlinks will lead Internet users to believe that the website is sponsored by or affiliated with Complainant. See Compl., at Attached Ex. D. Further, Respondent presumably is profiting from receiving pay-per-click fees. In either event, prior panels have found bad faith where the respondent has displayed competing hyperlinks or attempted to pass itself off as the complainant. 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); see also Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Therefore, the Panel finds bad faith as it finds that Respondent is trying to pass itself off as Complainant and is using the domain name to display competing hyperlinks.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <quicksilvercapitalone.com> domain name using the CAPITAL ONE and QUICKSILVER trademarks and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <quicksilvercapitalone.com> domain name be TRANSFERRED from Respondent to Complainant
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 8, 2015
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