Capital One Financial Corp. v. berny fellas
Claim Number: FA1706001737109
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is berny fellas (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonegroups.com>, registered with Web4Africa 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2017; the Forum received payment on June 23, 2017.
On June 27, 2017, Web4Africa Inc. confirmed by e-mail to the Forum that the <capitalonegroups.com> domain name is registered with Web4Africa Inc. and that Respondent is the current registrant of the name. Web4Africa Inc. has verified that Respondent is bound by the Web4Africa 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 June 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@capitalonegroups.com. Also on June 27, 2017, 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 July 19, 2017, 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the CAPITAL ONE mark in connection with a wide variety of financial products and services. Complainant registered the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626, registered Aug. 13, 1996), as well as in numerous other jurisdictions, which demonstrates its rights in the mark. Respondent’s <capitalonegroups.com>[1] domain name is confusingly similar to Complainant’s mark because it incorporates the CAPITAL ONE mark in its entirety, adding only the generic term “groups,” and the generic top-level domain (“gTLD”) “.com,” neither of which meaningfully distinguishes the domain name from Complainant’s registered mark.
2. Respondent has no rights or legitimate interests in <capitalonegroups.com>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the CAPITAL ONE mark for any purpose.
3. Respondent also fails to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial fair use of any kind, because the domain name resolves to a parked website that contains links to other websites (some of which belong to Complainant and Complainant’s competitors).
4. Respondent registered and continues to use <capitalonegroups.com> in bad faith. Respondent’s use of the domain involves attracting Internet users to its site using Complainant’s notoriety, presumably so that it may financially profit by way of pay-per-click hyperlinks and advertisements. By interfering with Complainant’s customer base in this way, Respondent disrupts Complainant’s business activities and exhibits bad faith of the kind articulated by Policy ¶¶ 4(b) (iii) and (iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CAPITAL ONE mark. Respondent’s domain name is confusingly similar to Complainant’s CAPITAL ONE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <capitalonegroups.com> domain name and that Respondent registered and uses the domain name 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(f), 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 (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 prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a trademark. Complainant has multiple registrations of the CAPITAL ONE mark used in connection with financial goods and services with the USPTO (e.g., Reg. No. 3,442,400, registered June 3, 2008), and with other jurisdictions around the world. Registration of a mark with the USPTO and other entities sufficiently establishes the required rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has established its rights in or to the CAPITAL ONE mark under Policy ¶ 4(a)(i).
The second component of Policy ¶ 4(a)(i) requires that a complainant demonstrate that the domain name at issue is identical or confusingly similar to the complainant’s mark. Here, Complainant argues that the <capitalonegroups.com> domain name is confusingly similar to its CAPITAL ONE mark because it is composed entirely of the mark, with two minor additions: the addition of the generic term “groups” and a “.com” gTLD. Neither of these sufficiently distinguishes the domain name from its CAPITAL ONE mark. The addition of generic words fails to sufficiently distinguish domain names from registered marks. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Finally, the addition of the “.com” gTLD is insufficient to preclude a finding of confusing similarity. See, e.g., AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Therefore, the Panel finds that the additions made to Complainant’s CAPITAL ONE mark in <capitalonegroups.com> do not serve to differentiate the two for the purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <capitalonegroups.com> 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 (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 argues that Respondent has no rights or legitimate interests in the <capitalonegroups.com> domain name as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent’s use of the CAPITAL ONE mark, Complainant contends that Respondent is not commonly known by the domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the WHOIS information concerning <capitalonegroups.com> identifies “berny fellas” as the registrant, which Complainant demonstrates Respondent is commonly known by the domain name. Thus, the Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <capitalonegroups.com> domain name pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant argues that the <capitalonegroups.com> domain name resolves to a parked website that displays pay-per-click hyperlinks and advertisements, some of which link to the website of Complainant and Complainant’s competitors. This constitutes neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Under a Policy ¶¶ 4(c)(i) and (iii) analysis, it is irrelevant whether it is a respondent or their registrar who receives click-through revenue. See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith). Therefore, Complainant has sufficiently shown that Respondent’s activities neither provide a bona fide offering of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent uses <capitalonegroups.com> to display links to Complainant’s competitors, which disrupts Complainant’s business activities. This sort of disruption can be evidence of bad faith on the part of a respondent. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Further, Complainant contends, Respondent uses the domain name to attract Internet users in order to personally profit by way of click-through revenue. Capitalizing on the goodwill and notoriety of widely known marks in this way can provide evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Because the evidence supports Complainant’s contentions, the Panel concludes that Complainant has sufficiently alleged Respondent’s bad faith within the meaning of Policy ¶¶ 4(b)(iii) or (iv), or both.
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 <capitalonegroups.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 21, 2017
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