Capital One Financial Corp. v. Alex Delgadillo / Desert twins properties
Claim Number: FA1512001650472
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Alex Delgadillo / Desert twins properties (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capitaloneinvestmentinc.com> and <capitalonegroupinc.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 known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 2, 2015; the Forum received payment on December 2, 2015.
On December 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitaloneinvestmentinc.com> and <capitalonegroupinc.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 December 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@capitaloneinvestmentinc.com, and postmaster@capitalonegroupinc.com. Also on December 3, 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 December 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant’s rights in the CAPITAL ONE are based upon the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626, registered August 13, 1996).
2. Respondent’s domains <capitaloneinvestmentinc.com> and <capitalonegroupinc.com> , registered on May 4, 2015, are confusingly similar to the CAPITAL ONE mark as the domains include the mark in its entirety and add the generic top-level domain (“gTLD”) “.com” and the generic terms “investment” and “inc,” or “group” and “inc.”
3. Respondent has no rights or legitimate interests in the domain names. Respondent has not been commonly known by the <capitaloneinvestmentinc.com> or <capitalonegroupinc.com> domains, Moreover, Respondent has not been authorized to use the CAPITAL ONE mark, nor has been a licensee of Complainant.
4. Respondent’s domains resolve to an inactive webpage which is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domains.
5. Respondent has registered and is using the domain names in bad faith. Respondent’s bad faith is evident from Respondent’s failing to make an active use of the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CAPITAL ONE mark. Respondent’s domain names are confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the capitaloneinvestmentinc.com> or <capitalonegroupinc.com> domain names, and that Respondent registered and uses the 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 has registered the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 1,992,626, registered Aug 13, 1996), which demonstrates its rights in the mark. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that the <capitaloneinvestmentinc.com> and <capitalonegroupinc.com> domain names are confusingly similar to the CAPITAL ONE mark in which Complainant has rights. The domain names include the CAPITAL ONE mark and add the gTLD “.com” and the generic terms “group” and “inc” or “investment” and “inc.” The presence of the gTLD “.com” in a domain is not a relevant consideration when conducting a confusing similarity analysis under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Similarly, the presence of generic terms is not considered a distinguishing feature when the terms are merely attached to a mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Thus, the Panel concludes that the <capitaloneinvestmentinc.com> and <capitalonegroupinc.com> domain names are confusingly similar to the CAPITAL ONE mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has not been commonly known by the <capitaloneinvestmentinc.com> or <capitalonegroupinc.com> domain names, and has not been authorized to use the CAPITAL ONE mark, or been a licensee of Complainant. WHOIS information shows that Respondent registered the domains using the name “Alex Delgadillo” of the organization “Desert twins properties,” neither of which are similar to the <capitaloneinvestmentinc.com> or <capitalonegroupinc.com> domain names. On this record, the Panel concludes that Respondent is not commonly known by the <capitaloneinvestmentinc.com> or <capitalonegroupinc.com> domain names. 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 next argues that Respondent’s inactive use of the domains is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <capitaloneinvestmentinc.com> or <capitalonegroupinc.com> domains resolve to websites that display the message, “website coming soon! Please check back soon to see if the site is available.” Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has demonstrated bad faith registration and use of the <capitaloneinvestmentinc.com> and <capitalonegroupinc.com> domains by failing to make an active use of the domain names as described above. A respondent acts in bad faith based on prolonged inactive use of a domain. See Cambridge Savings Bank v. nianxin lin, FA 1284852 (Nat. Arb. Forum October 30, 2009) (finding respondent’s failure to actively use the disputed domain name constitutes bad faith registration and use.).
The Panel finds Complainant has satisfied 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 <capitaloneinvestmentinc.com> and <capitalonegroupinc.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 11, 2016
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