Capital One Financial Corp. v. Fred C / Sharron W
Claim Number: FA1709001751172
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Fred C / Sharron W (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capital1option.com> and <capital1options.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2017; the Forum received payment on September 28, 2017.
On September 29, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <capital1option.com> and<capital1options.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 October 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@capital1option.com, postmaster@capital1options.com. Also on October 11, 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 November 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a major financial institution that pioneered the mass marketing of credit cards in the early 1990s.
Complainant holds a registration for the CAPTIAL ONE mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,442,400, registered June 3, 2008.
Respondent registered the domains names <capital1option.com> and <capital1options.com> on March 7, 2017 and July 25, 2017, respectively.
Both of the domain names are confusingly similar to Complainant’s CAPITAL ONE mark.
Respondent has not been commonly known by either of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use its CAPITAL ONE trademark in a domain name.
Respondent has not made a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, either of the domain names.
Instead, Respondent employs the domain names to redirect Internet users seeking Complainant’s financial services to websites that offer competing financial and loan services, presumably for Respondent’s pecuniary gain.
Respondent has no rights to or legitimate interests in the domain names.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent attempts to pass itself off as Complainant by means of the domain names confuses Internet users as to the possibility of Complainant’s affiliation with them.
Respondent has registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
Complainant alleges that the entities that control the domain names here at issue, <capital1options.com> and <capitol1option.com>, are effectively the same person and/or entity, which is operating under several aliases. Specifically, Complainant contends that the registrant for both domain names used the same registrar, as well as the same format for completion of the related WHOIS information and the same name servers, and, further, that both resolving websites are identical to one another. Additionally, Complainant asserts that the domain name <capital1options.com> was registered on July 25, 2017, four days after the suspension of the domain name <capitol1option.com>. Respondent does not contest any of these assertions.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In light of Complainant’s undisputed allegations linking the putative registrants of the domain names, this proceeding will be conducted as involving a single Respondent, to be identified as shown in the Caption of this Decision.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the CAPITAL ONE trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of [ ¶ 4(a)(i) of ] the Policy.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s domain names <capital1option.com> and <capital1options.com> are each confusingly similar to Complainant’s CAPITAL ONE trademark. The domain names contain the mark in its entirety, with the substitution of the numeral “1” for the word “one,” and adding the generic term “option” or “options” plus the generic Top Level Domain (“gTLD”). These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (finding the <pandora1.com> domain name to be confusingly similar to a UDRP complainant’s PANDORA ONE mark due to the similarity between the word ONE and the numeral 1 in meaning and sound.). See also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding the addition of both a generic term and a gTLD to the mark of another in creating a domain name insufficient to distinguish that domain name from the mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by either of the domain names
<capital1option.com> and <capital1options.com>, and that Complainant has not licensed or otherwise authorized Respondent to use its CAPITAL ONE trademark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the <capital1option.com> domain name only as “Fred C” and the registrant of the <capital1options.com> domain name only as “Sharron W,” neither of which resembles the challenged domain names. On this record, we conclude that Respondent has not been commonly known by either of the two domain names so as to have acquired rights to or legitimate interests in either of them within the ambit of Policy ¶ 4(c)(ii). See, for example, Buff Exteriors, LLC v. gregg buffington, FA 1691787 (Forum October 17, 2016) (finding, under Policy ¶ 4(c)(ii), that, where a respondent fails to submit evidence on the point, the relevant WHOIS record may be taken as proof of the name by which that respondent is commonly known).
We next observe that Complainant contends, without objection from Respondent, that Respondent has not used either of the domain names <capital1option.com> or <capital1options.com> in connection with a bona fide offering of goods or services or a legitimate noncommercial of fair use, in that Respondent employs the domain names to redirect Internet users seeking Complainant’s financial services to websites that offer competing financial and loan services, presumably for Respondent’s pecuniary gain. This use of the domain names is neither a
bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016), finding that:
[U]se of a domain [name] to sell products and/or services that compete directly with a [UDRP] complainant’s business does not constitute 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).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the domain names <capital1option.com> and <capital1options.com>, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain names. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015):
Respondent uses the at-issue domain name to operate a website that purports to offer … services … all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment of the <capital1option.com> and <capital1options.com> domain names, which we have found to be confusingly similar to Complainant’s CAPITAL ONE mark, is an attempt by Respondent to profit financially from the confusion thus caused among internet users as to the possibility of Complainant’s sponsorship of or affiliation with the domain names. Under ¶ 4(b)(iv), this too demonstrates Respondent’s bad faith in registering and using the domain names. See, for example, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015):
The Panel agrees that Respondent’s use of the website [resolving from a challenged domain name] to display products similar to [a UDRP] Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <capital1option.com> and <capital1options.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 14, 2017
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