Capital One Financial Corp. v. Erick Lima / Erick Lima
Claim Number: FA1602001659664
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Erick Lima / Erick Lima (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitcapitalone.com>, registered with Domain.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.
Scott R. Austin, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2016; the Forum received payment on February 5, 2016.
On February 5, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <bitcapitalone.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 February 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2016 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@bitcapitalone.com. Also on February 5, 2016, 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.
A timely Response was received and determined to be complete on February 10, 2016.
On February 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant, Capital One Financial Corp., is a major financial institution headquartered in McLean, Virginia and either directly or via one of its wholly-owned subsidiaries, owns over 100 pending applications or registrations for the CAPITAL ONE mark which it has used since at least as early as the early 1990’s to identify Complainant as the source of a variety of banking and financial services all over the world and in the United States.
2. Complainant claims it has legitimate rights in the CAPITAL ONE mark because Complainant has obtained a number of trademark registrations for the CAPITAL ONE mark with the United States Patent & Trademark Office (“USPTO”) as shown in Complaint Annex Exhibit A, Attachment 1. See, e.g., Reg. No. 1,992,626, registered August 13, 1996.
3. The WHOIS data set forth in Complaint Annex Exhibit B shows Respondent registered the <bitcapitalone.com> domain name on October 10, 2015, almost two decades after Complainant’s earliest marks had been registered as shown in evidence submitted in Complaint Annex Exhibit A, Attachment 1.
4. Respondent’s <bitcapitalone.com> disputed domain name is confusingly similar to Complainant’s CAPITAL ONE mark because it incorporates Complainant’s CAPITAL ONE mark in its entirety and merely adds the generic term “bit” as a prefix while eliminating spacing between words of the mark, and appends the “.com” generic top-level domain (“gTLD”).
5. The presence of the generic term “bit” which itself has become a term associated with a form of digital currency, “bitcoin” used in online payment processing and the generic top-level domain (“gTLD”) “.com,” is insufficient to negate the confusing similarity between Respondent’s disputed domain name and Complainant’s marks.
6. Respondent is not commonly known by the <bitcapitalone.com> domain name.
7. Respondent has no rights or legitimate interests in the disputed domain name because it resolves to an inactive landing page with a statement noting “Welcome to BitCapitalOne.com! Download the application from here” Compl. Ex. C;
8. The download link at Respondent’s site does not open a file and as such Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use;
9. Respondent registered the disputed domain name in bad faith because Respondent had knowledge of Complainant’s rights in the CAPITAL ONE mark as shown by the parsing of the terms as used in the landing page, namely “Welcome to BitCapitalOne.com!, clearly intending the terms to be perceived as BIT and CAPITAL and ONE;
10. Respondent has used the descriptive term “bit” as the initial term in the disputed domain name, which term is commonly associated as a prefix in the name of the open source form of digital currency known as “bitcoin”; and as appended as a prefix to Complainant’s mark for banking and financial services in the disputed domain name is evidence of bad faith to falsely associate the disputed domain with Complainant’s mark and thereby create value in the domain name by prospective domain name purchasers.
11. The <bitcapitalone.com> domain name was registered and used in bad faith. Respondent has inactively held the disputed domain name, constituting non-exclusive evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent makes the following contentions:
1. Respondent concedes that the <bitcapitalone.com> can be confusing/misleading;
2. Respondent contends that the domain name was created during a hackathon in UNC, North Carolina to reflect “bitcapita lone;”
3. Respondent concedes that its website is not functional;
4. Respondent argues the domain name was not registered in bad faith because it is inactive;
5. Respondent requests the domain name be transferred to Complainant.
Complainant owns numerous registrations for the CAPITAL ONE marks throughout the U.S. and around the world.
Respondent’s WHOIS information for the disputed domain name <bitcapitalone.com> identifies Respondent “Eric Lima” as registrant and registrant’s organization as Eric Lima and provides the registration date for the disputed domain name as October 10, 2015.
Complainant’s marks were registered in the U.S. and many other countries well before Respondent registered its domain name on October 10, 2015;
Respondent’s disputed domain name, <bitcapitalone.com> domain name is substantially similar to Complainant’s mark, because it incorporates Complainant’s CAPITAL ONE mark in its entirety and adds only the generic term “BIT” as a prefix to Complainants mark, and the gTLD “.com” as a suffix and removes the spaces between the words of Complainant’s mark. These additions and alterations do not distinguish the disputed domain name from Complainant’s mark but may in fact add to the confusing similarity between the disputed domain name and Complainant’s mark.
Respondent is not commonly known by Complainant’s CAPITAL ONE mark, nor is Respondent licensed by Complainant to use any of Complainant’s marks.
Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services.
The products and services offered by Complainant under its CAPITAL ONE marks are confusingly similar and related to the identified financial services associated with the terms used in the disputed domain name registered and established to support an accessible web site by Respondent.
The domain name has been registered and is being used 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.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <bitcapitalone.com> domain name to Complainant. However, Respondent also claims that the domain name was created during a hackathon in UNC, North Carolina to reflect “bitcapita lone” and argues that it was not created in bad faith. Conversely, Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel.
The Panel notes that UDRP cases that have considered circumstance such as this, where the named Respondent agrees to transfer the domain name in question to Complainant, have taken widely disparate approaches to reach ultimately the same result, transfer of the domain name to the Complainant.
The cases that have dealt with the consent to transfer scenario appear to be split between two approaches. First, there are those cases where the Panel decides to forego the traditional UDRP analysis and order an immediate transfer of the domain name, considering that such consent represents the sufficient sole basis for a transfer without findings of fact or conclusions under Policy ¶ 4(a). See, e.g., Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
In contrast are those consent–to-transfer cases where the circumstances compel the Panel to rule on the merits and consider such consent as an element in the appreciation of all the Policy elements. See, e.g., Brainetics LLC v. Profile Group / DNS Manager, FA1302001486915 (Nat. Arb. Forum April 16, 2013) (Deciding to analyze the UDRP elements to deal with cybersquatting because “[T]he Panel finds as in other prior cases, that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them”); Krea Icerik Hizmetleri Ve Produksiyon Anonim Sirketi v. Sherene Blackett / Abstract Holdings International Ltd, FA1303001489266 (Nat. Arb. Forum April 29, 2013) (Although empowered to forego UDRP analysis, Panel will not do so where common request for transfer is absent and Complainant did not consent to transfer without decision on the merits); Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008) (“However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be [analyzed] along with the findings in accordance with the Policy”); Amegy Bank Nat’l Assoc. v. Admin, LLC, FA 132547 (Nat. Arb. Forum June 29, 2010); accord Gassan Diamonds B.V. v. Van Etten Bernardus Jacobus, AF-0149b (eResolution May 25, 2000) (finding that despite a willingness to transfer by the respondent, any lack of settlement or actual transfer compels panel to issue a decision to prevent recurring disputes). The scope of the Policy is to deal with cybersquatting, which has been defined as the “deliberate, bad faith, abusive registration of domain names in violation of others rights.” Brainetics LLC v. Profile Group / DNS Manager, FA1302001486915 (Nat. Arb. Forum April 16, 2013), quoting Final Report of the WIPO Internet Domain Name Process 29 (1999),available at http://www.wipo.int/amc/en/processes/process1/report/finalreport.html.
The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. As the panel stated In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs.:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy. Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008)
Given that in this case the use of the disputed domain name is in support of a searchable website that although currently incactive, welcomes arriving visitors to BitCapitalOne.com!, not BitCapitaLone, as Respondent would have us believe, the Panel finds that Respondent’s defense is not a compelling account. In addition, Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel.
The Panel decides, therefore, that rather than forego the traditional UDRP analysis and order the immediate transfer of the disputed domain name as Respondent suggests, it is compelled instead to make findings of fact regarding compliance with the Policy and analyze the case under the elements of the UDRP.
Complainant claims it has rights in the CAPITAL ONE mark. In support of its assertion, Complainant has included a multitude of trademark registrations in its Complaint. See Compl., at Attached Ex. A (Reg. No. 1,992,626, registered August 13, 1996). Panels have seen rights exist even where a single USPTO registration is on record for an alleged mark of a complainant. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, this Panel finds that Complainant has established rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <bitcapitalone.com> domain name is confusingly similar to the CAPITAL ONE mark as it merely adds the generic term “bit,” as a prefix before incorporating Complainant’s entire identical mark, only eliminating spacing between words of the mark, and appending the generic “.com” gTLD. Panels have seen such minor alterations and generic additions as insufficient in overcoming confusing similarity findings. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, this Panel agrees that Respondent’s <bitcapitalone.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i) especially here, where the prefix added by Respondent “bit” has acquired a common association with a term for an open source medium of exchange or digital currency known as “bitcoin”, which could accentuate consumer confusion when tied to Complanant’s mark used to identify banking and financial services.
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 contends that Respondent has no rights or legitimate interests in the <bitcapitalone.com> domain name. Complainant argues first that Respondent is not commonly known by the <bitcapitalone.com> domain name as Respondent is listed as “Erick Lima / Erick Lima” in the publicly available WHOIS information. This Panel agrees and finds the evidence demonstrates Respondent not commonly known by the disputed domain name and Respondent is unable to apply a defense under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was s where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further argues that Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, the website resolves to a web page predominated by advertising in the form of a welcome message and a link that does not open a file, and which may be malware. See Compl. Annex, Ex. C.
The Panel notes that Respondent admits in its Response, “The domain is not functional in any way…” Based on this evidence in addition to its findings above, the Panel finds Complainant has established a prima facie case under Policy ¶ 4(a)(ii). See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name) See Capital One Financial Corp. v. Peter Keating, FA1639064, (Nat. Arb. Forum October 26, 2015) (finding “…that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(c)(i) and (iii)” where “[t]he domain name resolves to a webpage with a message reading, ‘Website coming soon!’”); see also Capital One Financial Corp. v. Balbir Johal, FA1602628 (Nat. Arb. Forum February 27, 2015) (finding that the disputed “…domain name resolves to a website with no content, but only a statement indicating: ‘Website Coming Soon!’ This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The burden having shifted to Respondent, Respondent has made no contentions with regards to Policy ¶ 4(a)(ii) and such Policy therefore weighs in favor of Complainant.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Respondent registered and uses the at-issue domain name in bad faith.
Complainant argues that the <bitcapitalone.com> domain name was registered and used in bad faith because Respondent is using the disputed domain name <bitcapitalone.com> to resolve to a blank or inactive page and that failure to actively use a domain name constitutes bad faith registration and use.
While Complainant’s contentions may not fall squarely within the expressly articulated provisions of Policy ¶ 4(b), the Panel notes that the 4(b) provisions are non-exclusive and meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Policy ¶ 4(b).
Complainant argues that Respondent has inactively held the disputed domain name, constituting evidence of bad faith under Policy ¶ 4(a)(iii). The panel in Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) concluded that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith. Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007); see also Capital One Financial Corp. v. Peter Keating, FA1639064, (Nat. Arb. Forum October 26, 2015) (finding bad faith under Policy ¶ 4(a)(iii) “…where the respondent failed to actively use the domain name at issue.”); see also Capital One Financial Corp. v. Balbir Johal, FA1602628 (Nat. Arb. Forum February 27, 2015) (finding bad faith registration and use where the disputed “…domain name has not been employed in any active use. This stands as proof that Respondent has registered and now uses the domain name in bad faith for purposes of Policy ¶ 4(a)(iii).”); see also Capital One Financial Corp., v. Roger Bovee, FA 1562359 (Nat. Arb. Forum June 30, 2014) (finding that at-issue “domain name resolves to a parked web-page, and that Respondent purchased the domain name with the intent to sell it to Complainant for a profit. This employment of the domain name is neither a bona fide offering of good or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii).”); quoting Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“the panel there finding that: ‘Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).’”); see also Capital One Financial Corp. v. C W, FA 1542251 (Nat. Arb. Forum March 17, 2014) (finding that “Respondent is not making a bona fide offering of foods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Plicy ¶ 4(c)(iii) because Respondent has failed to make an active use of the <capitalonebusinesscreditcard.com> domain name.”); see also 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.); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Respondent is using the disputed domain name <bitcapitalone.com> to resolve to a blank or inactive page. Is this context particularly the panel finds failure to actively use the disputed domain name constitutes bad faith registration and use where the disputed domain offers a term added to a registered mark which clearly relates to the services and industry the registered mark identifies, and employs a trending popular term to attract visitors and add value in the mind of an inquiring prospective purchaser of the disputed domain name who visits the parked or inactive web site as anticipated under Policy ¶ 4(b)(iv). This Panel finds the facts of this case cast a similar shadow as in the foregoing cases finding bad faith and finds here that Respondent has inactively held the disputed domain in bad faith per 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 <bitcapitalone.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: February 28, 2016
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