Capital One Financial Corp. v. Robert Fogg
Claim Number: FA1612001706553
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Robert Fogg (“Respondent”), Maine, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonereviews.com>, registered with Domain.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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on December 8, 2016; the Forum received payment on December 8, 2016.
On December 9, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <capitalonereviews.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 December 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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@capitalonereviews.com. Also on December 12, 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 December 27, 2016.
Complainant filed an Additional Submission on January 2, 2017, which complied with Supplemental Rule 7 and was considered by the Panel.
Respondent filed an Additional Submission on January 6, 2017, which complied with Supplemental Rule 7 and was considered by the Panel.
On January 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Policy ¶ 4(a)(i)
Complainant has rights in the CAPITAL ONE mark (the “Mark”) through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,442,400, registered on June 3, 2008), and in many other countries. Complainant registered and uses the Mark in connection with its banking and financial services business, which includes traditional banking services, credit cards, mortgages, secured and unsecured installment loans and many other financial services. Respondent’s <capitalonereviews.com> domain name (the “Domain Name”) is confusingly similar to the CAPITAL ONE Mark because it contains the Mark along with the generic term “reviews” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the Domain Name, as the available WHOIS information identifies “Robert Fogg” as Registrant and because Respondent has not been authorized to use the CAPITAL ONE Mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is an inactive page.
Policy ¶ 4(a)(iii)
Respondent uses the Domain Name in bad faith because the resolving website is an inactive page, and Respondent registered the domain name through the use of a privacy service.
B. Respondent:
Policy ¶ 4(a)(i)
The Domain Name is not confusingly similar to the CAPITAL ONE mark because the additional term “reviews” identifies the intended purpose of the website, which is to provide a place where consumers can post and find honest reviews of Complainant’s products and services. This falls within the “nominative fair use” doctrine.
Policy ¶ 4(a)(ii)
Respondent registered the Domain Name for the purpose of creating a website where consumers can review the services of Complainant, so the use of the CAPITAL ONE Mark in the domain name is necessary in order to describe the planned use. Respondent had owned the Domain Name for just over two months when Complainant filed this proceeding, and he has not had enough time to get the new site up and running. The Domain Name now points to Respondent’s <easywayreviews.com> website, which is still under construction at this time, but progress is being made.
Policy ¶ 4(a)(iii)
Respondent has not made any attempt to profit through the use of the Domain Name. Respondent’s use of a privacy service in registration was not done in bad faith because it was a free option provided by the Registrar to help in preventing identity theft and the receipt of spam contacts. The privacy registration does not prevent Internet users from contacting Respondent.
Respondent has not attempted to sell the Domain Name or to profit from the CAPITAL ONE Mark in any way.
C. Complainant Additional Submission
Adding the generic term “reviews” to Complainant’s Mark does not sufficiently distinguish the Domain Name from that Mark.
Since Respondent’s website does not permit Internet users to post or read reviews of Complainant’s services, his claim of nominative fair use is invalid on its face. His bald assertion that the website will eventually, at some undefined time in the future, be used as he asserts, unsupported by any evidence, is insufficient to establish nominative fair use. Secondly, using Complainant’s Mark in the Domain Name goes beyond what is reasonably necessary to identify the products or services of Complainant. All that is required to identify Complainant’s products or services is some text on the <easywayreviews.com> website, not a separate domain name containing Complainant’s Mark. By using that Mark in his Domain Name, Respondent fails to satisfy the standard for nominative fair use.
In an attempt to moot Complainant’s bad faith argument based upon no active use, Respondent started “using” the Domain Name to direct traffic to his <easywayreviews.com> website, but this also is evidence of bad faith.
Respondent has still failed to provide any legitimate evidence establishing the nominative fair use that will allegedly occur at some undefined future time.
D. Respondent Additional Submission
The term “reviews” is not generic. It has a specific meaning that is well recognized online. Online reviews are now common, and one would assume that a website titled <CapitalOneReviews.com> would be intended for the purpose of reading and/or submitting reviews of Capital One, rather than for purchasing goods or services from Capital One.
Creating a reviews website was and is a process. Respondent was not able to produce a final, perfected and tested reviews website instantly upon purchase of the Domain Name. Respondent saw no logic in spending the effort and money to do so in advance of purchasing the Domain Name for fear that it would be taken by the time the website was ready.
Including the Mark in the Domain Name is reasonably necessary because consumers wishing to read or post reviews of Capital One products and services would most likely type “Capital One Reviews” or similar entries using Complainant’s name into their search engine.
There is no evidence that Respondent is attempting to divert to his website Capital One customers who seek the banking and financial services offered by 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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant has clearly demonstrated its rights in the CAPITAL ONE Mark through its multiple registrations with the USPTO (e.g., Reg. No. 3,442,400, registered on June 3, 2008) and in many other countries as well, which it uses for banking and financial services. See, Attachment 1 to Complainant’s Exhibit A. See also, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Moreover, Respondent concedes Complainant’s rights in the Mark.
Complainant maintains that Respondent’s Domain Name is confusingly similar to the CAPITAL ONE Mark because it contains that Mark verbatim, plus the added term “reviews” and the gTLD “.com.” Complainant argues that “reviews” is a generic term that does not distinguish the Domain Name from Complainant’s Mark. Respondent asserts, on the other hand, that the added word “reviews” is not generic, that it has a very specific meaning that is well recognized online and does not relate to Complainant’s business.
In evaluating whether the Domain Name is confusingly similar to the Complainant’s Mark, the Panel looks at two things: The Complainant’s Mark, CAPITAL ONE, and the Domain Name, < capitalonereviews.com>. The content of any website resolving from the Domain Name is irrelevant in the finding of confusing similarity. Caterpillar Inc. v, Ron Feimer, FA 1008998 (FORUM July 28, 2007). Turning to the actual criteria for determining whether a domain name is “identical or confusingly similar” to a complainant’s mark, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) first confirms that one compares the domain name to the complainant’s mark and then explains the substance of the test, as follows:
The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Id., Sec. 1.2. See, also SoftCom Technology Consulting, Inc. v. Olariu Romero/Orv Fin Group S.L., WIPO Case No. D2008-0792, Wal-mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662,
This standard contemplates a threshold, standing-oriented test, in which a complainant would need to show only that its trademark is present and recognizable as such in the domain name in order to meet the requirements of Policy ¶ 4(a)(i). This standard serves essentially as a standing requirement and is easily met. See, Project Management Institute v. CMN.com, WIPO Case No. D2013- 2035.
Some panels, however, have added a requirement that, for a domain name to be regarded as confusingly similar to the trademark there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant. WIPO Overview 2.0, Sec. 1.2. See also, Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843, V&S Vin & Spirit AB v. Ooaar Supplies, WIPO Case No. D2004-0962. In other words, the test would also include a determination whether the domain name causes or is likely to cause confusion as to the source, affiliation or sponsorship of the resolving website. See, MSI Holdings, LLC v. Biohistory Research, FA 6266225 (FORUM July 31, 2015).
In this case, Respondent makes a strong argument that the term “reviews,” by its very nature, implies independence and differentiation from Complainant and its products and services. As such the Domain Name would not cause an Internet user to believe that the resolving website would be owned, operated, sponsored or endorsed by the Complainant, and should therefore not be regarded as confusingly similar to Complainant’s Mark. If the more restrictive standard were applied, Respondent might very well prevail on this element of the case, while if the standing test were used he would fail. Accordingly, the Panel must decide which standard should be applied.
This Panel considers that the basic standing-oriented standard is preferable, for a number of reasons. First of all, turning to Respondent’s argument about the unique character of the term “reviews,” other panels have considered domain names that added that term to the mark of the complainant. The panels in those cases found that the term “reviews” failed to distinguish the domain names from the complainant’s marks and held them to be confusingly similar to those marks. See, Volaskantjis Family Trust v. Katz Global Domain Name Trust, FA 1366191 (FORUM Feb. 4, 2011) (<tomsfamousfamilyrestaurants-review.com>), Western Holdings, LLC v. RegisterFly.com Ref #19846124 & 19846140, FA 0651448 (FORUM Apr. 11, 2006) (<hylexin-reviews.com>), and Shane Malek v. Robert Henderson, FA 1650491 (FORUM Jan. 2, 2016) (<scalpmedreviews69.com>, <scalpmed-reviews.com>).
Secondly, a number of panels have decided cases in which respondents have added negative or derogatory terms to the trademarks incorporated into contested domain names, e.g., <walmartsucks.com>, <abercrombieandfilth.com>, <asdasucks.com>, the so-called “sucks cases.” Wal-mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662, A & F Trademark, Inc. and Abercrombie and Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900, Asda Group Limited v. Mr. Paul Kilgour, WIPO Case No. D2002-0857. Notwithstanding the clear message from these domain names that the resolving websites would not be owned, operated, sponsored or endorsed by the trademark holders, the panels in these cases, and many others, have uniformly held that the domains were confusingly similar to the marks also contained in those names.
Finally, because the Policy requires a complainant to prove all three elements set forth in Policy ¶ 4(a) in order to prevail, a respondent could avoid transfer of its domain name in cases involving manifest bad faith and patently deceptive practices simply by crafting a domain name that clearly implies independence and separation from the trademark owner and its business, while the resolving website fails to deliver on the services represented or implied by the domain name, or is a simple bait-and-switch or other fraudulent type of operation. To use the example of the term “reviews” present in this case, a respondent could register a domain titled <reviewsof[bank].com> for a website that offered sham reviews of that bank and then directed consumers to the services of another bank, perhaps one owned by or affiliated with the respondent itself. If a panel, applying the expanded, more restrictive standard, found that the domain name was not identical or confusingly similar to the complainant’s mark in such a case, it would not have an opportunity to address the fraudulent and deceptive practices occurring in the website under either of the other two elements articulated in subparagraphs (ii) and (iii) of Policy ¶ 4(a). The respondent would have prevailed on the Policy ¶ 4(a)(i) element, and the case would be over. This would result in manifest injustice and frustrate the purposes for which the Policy was developed.
Applying the standing-oriented test in this case, the Panel notes that Complainant’s Mark is the dominant component of the Domain Name. Adding the descriptive term “reviews” does not mask the Mark such that it is not recognizable within the Domain Name, and for the purposes of Policy ¶ 4(a)(i) it does not eliminate confusion resulting from the fact that the Mark is included in the Domain Name. It is generally held that adding a generic word or other symbol to a complainant’s mark in a domain name is insufficient to distinguish the domain name from the mark for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (FORUM Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
For the reasons set forth above, the Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show that it does. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 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 (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 has no rights or legitimate interests in the Domain Name because (i) he is not known by the Domain Name, (ii) Complainant has not authorized or licensed him to use the Domain Name or its Mark, and (iii) he is currently not making any use of the website that resolves from the Domain Name. Respondent does not dispute any of these facts, and on this evidence the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that he does.
Respondent bases his claim to rights and legitimate interests primarily on the doctrine of nominative fair use, claiming that the Complainant’s Mark is included in the Domain Name only to identify and make reference to Complainant to enable consumers to post online reviews of their experience with Complainant and to enable other consumers to benefit from those reviews. He asserted this argument in connection with the Policy ¶ 4(a)(i) element of the case but it is more appropriately considered here.
This doctrine of nominative fair use was articulated by the Ninth Circuit Court of Appeals decisions in New Kids on the Block v. News American Publishing, Inc., 971 F.2d. 302 (9th Cr. 1992), and Toyota Motor Sales, U.S.A., Inc .v. Tabari, 610 F.3d. 1171 (9th Cir. 2010). In New Kids, two newspapers used the name of the popular band New Kids on the Block in reader polls regarding that band. The court held that the referential use of another’s trademark is permissible where (i) the trademark owner’s product or service cannot be readily identified without using the mark, (ii) the mark is used only so much as is necessary for such identification, and (iii) such use does not suggest sponsorship or endorsement by the mark owner. 971 F.2d. at 308. In Tabari, the plaintiffs were auto brokers who registered and used the domain names <buy-a-lexus.com> and <buyorleaselexus.com.> The court in this case held that “momentary uncertainty” does not preclude the nominative use of another’s mark in a domain name, provided that a truthful use is being made to describe the domain name registrant’s business.” 610 F.2. at 1179.
The nominative fair use doctrine is founded upon the principle that “trademark law does not prevent the truthful use of trademarks.” 610 F.2d. at 1176-77. At the same time, the referential use of another’s trademark is permissible only to the extent necessary and such use must not suggest a false affiliation or endorsement by the trademark owner. Id. At 1171.
These principles have been applied by UDRP panels. The leading decision is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in which the respondent was a reseller of the complainant’s OKIDATA products. The respondent registered and used the domain name <okidataparts.com> in connection with that business. The panel in that case concluded that this use could be a bona fide offering of goods or services within the meaning of the Policy if the following conditions were satisfied:
· The respondent must actually be offering the goods or services at issue,
· The respondent must use the site to sell only the trademarked goods (otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods),
· The site itself must accurately disclose the respondent’s relationship with the trademark owner, and
· The respondent must not try to ‘corner the market’ in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
Other panels have concluded that applying the nominative fair use doctrine could also be appropriate in cases other than those involving a reseller of branded parts, provided that the respondent operated a business genuinely revolving around the trademark owner’s goods or services. See, National Association for Stock Car Auto Racing, Inc. v. Racing Connection/The Racin’ Connection, Inc., WIPO Case No. D2007-1524, in which the respondent demonstrated legitimate interests in the domain name <nascartours.com>. The panel found that the respondent was actually offering tours of NASCAR events and only tours of NASCAR events on the website associated with the domain name, and based its holding of bona fide offering of goods and services on those facts.
In this case, the Respondent presently has no active website associated with the Domain Name. He points out that he registered the Domain Name only a couple of months before Complainant filed this proceeding, and the WHOIS information contained on Exhibit B to the Complaint corroborates this, showing a creation date of October 2, 2016. This probably is not sufficient time within which to develop his planned reviews website. He may have made demonstrable preparations to use the Domain Name for this purpose but as Complainant points out he failed to submit any real evidence of this, and all the Panel has at this point is his unsupported statement that he plans to use the Domain Name for a website on which reviews of Complainant’s products and services may be posted and read. He offers no details about how or even whether he intends to use the website to generate revenues. This shortcoming is problematic but not material, however, because without an actual website in place it is impossible for the Panel to determine whether the requirements articulated in Oki Data and the other UDRP cases described above are (or will be) met. He certainly is not presently offering the services promised by the Domain Name, and there is no way to determine whether the site will offer genuine reviews of Complainant’s products and services or something altogether different, such as a bait-and-switch program whose primary purpose is to direct consumers to other providers of banking and/or financial services. Respondent’s temporary website has a prominent disclaimer and link to the Complainant’s website, and Respondent has registered only the Domain Name at issue in this case, so there is no evidence that he would attempt to “corner the market” as described in Oki Data. Nevertheless, without an actual website in operation, it is impossible for him to demonstrate that his website, when completed, will meet the requirements for a successful nominative fair use defense.
Respondent has not asserted, and there does not appear to be any other basis for a finding of rights or legitimate interests in the Domain Name. Respondent having failed to establish his claim of nominative fair use, the Panel concludes that he has no rights or legitimate interests in the Domain Name.
Registration and Use in Bad Faith
The third element of Complainant’s case is that the Domain Name has been registered and is being used in bad faith. Policy ¶ 4(a)(iii). Subparagraphs (i) through (iv) of Policy ¶ 4(b) describe four circumstances which evidence registration and use in bad faith. Complainant does not assert that Respondent’s conduct in this case fits specifically within any of those circumstances, but the circumstances listed there are not meant to be the exclusive indicia of bad faith. Policy ¶ 4(b) itself states that those circumstances, “in particular but without limitation,” can be evidence of bad faith but it is clear that the list in paragraph 4(b) is not exclusive. A Panel may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and it is not limited to the enumerated factors in Policy ¶ 4(b). See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”), and Intel Corporation v. The Pentium Group, WIPO Case No. 2009-0273 (“The four circumstances exemplified in paragraphs 4(b)(i) through (iv) of the Policy are not exclusive and bad faith may be found alternatively.”).
Complainant contends that Respondent’s registration and use of the Domain Name is in bad faith because the resolving website is an inactive page. Complainant has provided a screenshot of the resolving page, in its Exhibit C, displaying the words, “This site is under development,” to demonstrate this non-use. Complainant also asserts that Respondent registered and is using the Domain Name in bad faith because he registered it through a privacy service.
The Panel is not persuaded. As to Complainant’s first argument, that the resolving website is not currently active, Respondent registered the Domain Name on October 2, 2016, less than 60 days before Complainant initiated this proceeding. See, WHOIS information sheet attached as Exhibit B to Complaint. Respondent explains that although the Domain Name resolved to a page that stated “Under Development” when the Complaint was filed, he has since caused it to point to his new <easywayreviews.com> website, which he says is still under construction and “progress is being made.” He furnished a screenshot of that website which corroborates his statement that work is being done. See, Exhibit A to Response. He further explains his decision to register the Domain Name before the website would be operational as motivated by his desire to avoid investing the time and expense to develop the website only to discover when it was finished that the name was no longer available. Complainant cited a number of cases in which the panels have held that simply registering and keeping a domain without an active website is evidence of bad faith, but in this case the period of inactivity is very short. Respondent has made credible representations and has furnished documentary evidence in the form of his Exhibit A screenshot that he not only intends to create a functioning website but is actively working on it. The Panel understands and agrees that a respondent who registers and holds a domain name for an extended period of time without making any use of it can be guilty of bad faith but two months is not long enough for the inactivity to evidence bad faith registration and use. The facts of this case do not support a finding of bad faith registration and use based upon the mere absence of an active website at this time. See Meredith Corp. v. CityNome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that non-use of a domain name for eight months is reasonable time to engage in research and development).
As to Complainant’s argument that Respondent’s use of a privacy service to register the Domain Name, the consensus view among panels is that use of a privacy service, standing alone, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). Respondent utilized the privacy service in this case because his registrar offered it to him at no extra cost, and his intent was only to eliminate spam and lessen the risk of identity theft, not to hide information from Complainant. His privacy service provides a means of contacting the domain owner.
Further, there is no evidence to suggest that any of the four circumstances listed in Policy ¶ 4(b) as indicia of bad faith are present here. Respondent has never suggested he would be interested in selling the Domain Name. Policy ¶ 4(b)(i). Nor is there any evidence he registered it to prevent Complainant from using its mark in a domain name of its own (Policy ¶ 4(b)(ii))—Complainant has registered and is using the domain <captialone.com> already. As Respondent is not in the same business as Complainant, he cannot be characterized as a competitor who is using the name to disrupt complainant’s business. Policy ¶ 4(b)(iii). Finally, Policy ¶ 4(b)(iv) provides that a respondent may be guilty of bad faith by using his domain name to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of his website. Although the Domain Name was held to be identical or confusingly similar to Complainant’s CAPITAL ONE Mark for the purposes of Policy ¶ 4(a)(i), the analysis under Policy ¶ 4 (b)(iv) is different. The term “reviews” which is also contained in the Domain Name along with Complainant’s Mark, signifies a specific service commonly found on the Internet, being written commentary on the goods or services of a particular vendor, by persons who are not employed by or otherwise affiliated with the vendor. The term “review” by its very nature implies independence and distance from the object of the review. Moreover, the services offered on a reviews website are wholly distinct from those offered by the vendor being reviewed. Internet users seeking to contact Complainant would not be attracted to Respondent’s reviews website because it would not be expected to be owned or operated by Complainant and would not normally enable the user to contact Complainant. While the Domain Name clearly indicates that the resolving website would be about Complainant, it also indicates that it is not owned, sponsored or endorsed by Complainant. There is no evidence of any intent on Respondent’s part to lure consumers to his website under the impression that it is Complainant’s site.
For the foregoing reasons, the Panel finds that Respondent did not register and is not using the Domain Name in bad faith.
Complainant having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <capitalonereviews.com> domain name REMAIN WITH RESPONDENT.
Charles A. Kuechenmeister, Panelist
Dated: January 17, 2017
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