Capital Bank Corporation v. IonRocket
Claim Number: FA1708001744726
Complainant is Capital Bank Corporation (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein LLP, North Carolina, USA. Respondent is IonRocket (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalbanking.click>, registered with Uniregistrar Corp.
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 August 15, 2017; the Forum received payment on August 15, 2017.
On August 17, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <capitalbanking.click> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 August 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 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@capitalbanking.click. Also on August 18, 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 September 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 operates in the personal and business banking service industry. On or in connection with its goods and services, Complainant has registered the CAPITAL BANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,898,782, registered Jan. 4, 2011). Respondent’s <capitalbanking.click> domain name is confusingly similar to the CAPITAL BANK mark as the mark is incorporated entirely, less the space, with the mere addition of the present participle “ing,” and the “.click” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <capitalbanking.click> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent’s website includes links to Complainant’s competitors, which is not a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Compl., at Attached Ex. E.
Respondent registered and used the <capitalbanking.click> domain name in bad faith. Respondent has engaged in a scheme to commercially benefit from Internet user confusion via inclusion of competing links, as proscribed by Policy ¶¶ 4(b)(iii) and (iv). Respondent is deemed to have actual or constructive knowledge of Complainant and its marks. Lastly, Respondent has engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company engaged in the personal and business banking service industry.
2. Complainant has established its trademark rights in the CAPITAL BANK mark by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,898,782, registered Jan. 4, 2011).
3.Respondent registered the <capitalbanking.click> domain name on July 19, 2017.
4. The website to which the disputed domain name resolves includes links to Complainant’s competitors.
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 question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant operates in the personal and business banking service industry. Complainant submits that it has registered the CAPITAL BANK mark with the USPTO (e.g., Reg. No. 3,898,782, registered Jan. 4, 2011) on or in connection with its goods and services. Where a valid USPTO registration exists, rights under Policy ¶ 4(a)(i) are established. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has provided a valid and subsisting USPTO registration for the CAPITAL BANK mark and as such has established Policy ¶ 4(a)(i) rights.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CAPITAL BANK mark. Complainant argues that Respondent’s <capitalbanking.click> domain name is confusingly similar to the CAPITAL BANK mark as the mark is incorporated entirely, less the space, with the mere addition of the present participle “ing,” and the “.click” gTLD. Elimination of spacing has been deemed irrelevant. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Also, the “ing” addition has been found confusingly similar to a corresponding mark. See IMT Services Corporation v. Joel McLaughlin, FA 1283676 (Forum Oct. 28, 2009) (finding confusing similarity where, “The< insuringmytrip.com> domain name differs from Complainant’s INSURE MY TRIP mark by changing the tense of the first word to a present participle, omitting the spaces between the words, and adding the generic top-level domain (“gTLD”) “.com.”). The Panel also notes the decision in F. Hoffmann-La Roche AG v. Marina Kovtun, in which the “.click” gTLD was found to not distinguish the disputed domain name from the complainant’s mark. D2016-0852 (WIPO July 6, 2016). Therefore, the Panel finds that Respondent’s <capitalbanking.click> domain name is confusingly similar to the CAPITAL BANK mark under Policy ¶ 4(a)(i).
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 (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 (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 BANK mark and to use it in its domain name adding only the present participle “ing”;
(b) Respondent registered the domain name on July 19, 2017;
(c) The website to which the disputed domain name resolves includes links to Complainant’s competitors;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <capitalbanking.click> domain name as Respondent is not commonly known by the domain name. The Panel notes the WHOIS information regarding the disputed domain name, listing “IonRocket” as registrant of record. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence this Panel finds that there is no basis to find Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(f) Complainant argues that Respondent’s website includes links to Complainant’s competitors, which is not a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Compl., at Attached Ex. E. Panels have found such use by a respondent to evince neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Here, the Panel notes hyperlinks like “PNC BANK - NEW CUSTOMER OFFER - GET REWARDED UP TO $300,” “$300 Banking Offer,” and “Mobile Banking Apps.” See Compl., at Attached Ex. E. The Panel therefore finds that such use does not evince rights and legitimate interests in the domain name.
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 does not have a right or legitimate interest 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’s use of the <capitalbanking.click> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. See Compl., at Attached Ex. E (hyperlinks include: “PNC BANK - NEW CUSTOMER OFFER - GET REWARDED UP TO $300,” “$300 Banking Offer,” and “Mobile Banking Apps”). Panels have agreed where a respondent has purported to divert Internet users to competitors of a complainant via hyperlinks related to such a complainant’s legitimate business, such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, this Panel finds that Respondent’s <capitalbanking.click> domain name falls within the purview of Policy ¶ 4(b)(iii).
Secondly, Complainant contends that Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. The Panel agrees with Complainant and holds that Internet user confusion which subsequently results in the clicking of included hyperlinks and awards Respondent with click-through fees, constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). 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).
Thirdly, Complainant contends that in light of the fame and notoriety of Complainant's CAPITAL BANKING mark, it is inconceivable that Respondent could have registered the <capitalbanking.click> domain name without actual and constructive knowledge of Complainant's rights in the mark. The Panel here notes that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP decisions have declined to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel agrees that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Fourthly, Complainant makes a typosquatting argument. Typosquatting is defined as “a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016). Here, the typographical error is the addition of not only “ing” to the mark, but also the “.click” gTLD. As the Panel agrees this amounts to typosquatting under the foregoing definition, it finds bad faith under Policy ¶ 4(a)(iii) is present.
Fifthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the CAPITAL BANK mark and in view of the conduct that Respondent has
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 <capitalbanking.click> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
The Honourable Neil Anthony Brown QC
, Panelist
Dated: September 13, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page