Capital One Financial Corp. v. klim sulomley
Claim Number: FA1803001779073
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is klim sulomley (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonlb.com>, registered with NameCheap, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2018; the Forum received payment on March 27, 2018.
On March 28, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <capitalonlb.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2018 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@capitalonlb.com. Also on April 2, 2018, 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 April 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 is a major financial and investment institution headquartered in McLean, Virginia. Complainant has rights in the CAPITAL ONE mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626, registered Aug. 13, 1996). Respondent’s <capitalonlb.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark as Respondent misspells the mark (adds “lb,” deletes “e”) and adds the “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <capitalonlb.com> domain name. Respondent is not authorized or permitted to use Complainant’s CAPITAL ONE mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to pass itself off as Complainant for pecuniary gain.
Respondent registered and is using the <capitalonlb.com> domain name in bad faith. Respondent attempts to pass itself off as Complainant in order to disrupt and divert users to the disputed domain name. Furthermore, Respondent’s use of a privacy service is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <capitalonlb.com> domain name.
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.”).
Complainant claims to have rights in the CAPITAL ONE mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides printouts of Complainant’s trademark registrations all over the world, including its USPTO registrations for the CAPTIAL ONE mark (e.g., Reg. No. 1,992,626, registered Aug. 13, 1996). The Panel finds Complainant has sufficiently demonstrated its rights in the CAPITAL ONE mark per Policy ¶ 4(a)(i).
Complainant contends Respondent’s <capitalonlb.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark because Respondent merely misspells the mark and adds a gTLD. Such changes do not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). Complainant argues Respondent merely adds the letters “lb” and removes the letter “e” from Complainant’s CAPITAL ONE mark and adds the “.com” gTLD. The Panel finds Respondent’s <capitalonlb.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant asserts Respondent has no rights or legitimate interests in the <capitalonlb.com> domain name because Respondent is not authorized or permitted to use Complainant’s CAPITAL ONE mark. Also, Complainant argues Respondent is not commonly known by the disputed domain name. In cases where a respondent fails to submit a response, panels have relied on WHOIS information and Complainant’s contentions as to license or permission to determine whether respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information of record identifies Respondent as “klim sulomley.” The Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues Respondent does not use the <capitalonlb.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to pass off as Complainant. Passing off as a complainant for pecuniary gain is not considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant provides a screenshot of the disputed domain name which resolves to a website that offers financial and investment services in connection to Complainant’s mark. The Panel finds Respondent is attempting to pass off as Complainant and this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). The Panel finds Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant claims Respondent registered and is using the <capitalonlb.com> domain name in bad faith because Respondent attempts to pass off as Complainant in order to disrupt Complainant’s business and divert users to the disputed domain name which offers competing goods. Passing off as a complainant for financial gain may indicate bad faith under Policy ¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides a screenshot of the disputed domain name which resolves to a website that offers financial and banking services in connection to Complainant’s CAPITAL ONE mark. The Panel finds Respondent’s attempts to pass itself off as Complainant constitute bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <capitalonlb.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 4, 2018
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