Capital One Financial Corp. v. Domain Administrator / China Capital
Claim Number: FA1805001789437
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Domain Administrator / China Capital (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names here at issue are <neimanmarcuscapitalone.com>, <hudsonbaycapitalone.com> and <menardscapitalone.com>, each of which is registered with TurnCommerce, Inc. DBA NameBright.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 May 31, 2018; the Forum received payment on May 31, 2018.
On May 31, 2018, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <hudsonbaycapitalone.com>, <menardscapitalone.com>, and <neimanmarcuscapitalone.com> domain names are registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the names. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.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 June 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@hudsonbaycapitalone.com, postmaster@menardscapitalone.com, postmaster@neimanmarcuscapitalone.com. Also, on June 1, 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 June 25, 2018, 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the CAPITAL ONE mark, is a major financial institution that helped to pioneer the mass marketing of credit cards.
Complainant holds a registration for the CAPITAL ONE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,065,991, registered May 27, 1997, most recently renewed as of June 30, 2017.
Respondent registered the domain name <hudsonbaycapitalone.com> on February 9, 2018, the domain name <menardscapitalone.com> on February 8, 2018, and the domain name <neimanmarcuscapitalone.com> on January 25, 2018.
The domain names are each confusingly similar to Complainant’s CAPITAL ONE service mark.
Respondent lacks rights to and legitimate interests in the domain names.
Respondent has not been commonly known by the domain names.
Complainant has not authorized Respondent to use the CAPITAL ONE mark in any way.
Respondent fails to use the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Instead, Respondent uses the domain names to host a parked webpage that hosts links to the websites of Complainant’s commercial competitors.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent created the domain names to benefit from the goodwill associated with Complainant’s CAPITAL ONE mark.
Respondent registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect 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 by Respondent 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 as true all reasonable allegations and inferences set out in the Complaint 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 service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s rights in that mark meeting the requirements of Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Hong Kong). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of Respondent’s <hudsonbaycapitalone.com>, <menardscapitalone.com> and <neimanmarcuscapitalone.com> domain names is confusingly similar to Complainant’s CAPITAL ONE mark. The domain names each contain the mark in its entirety, with only the addition of one of the business names “hudsonbay” or “menards” or “neimanmarcus,” together with the generic Top Level Domain (“gTLD”) “.com.” 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, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (finding that confusing similarity existed where a disputed domain name contained a UDRP complainant’s entire mark and differed only by the addition of a descriptive phrase and gTLD, the differences between the domain name and the mark being insufficient to distinguish one from the other for purposes of the Policy).
See alsoTrip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that adding a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make a prima facie evidentiary showing that Respondent lacks rights to and legitimate interests in the challenged <neimanmarcuscapitalone.com>, <hudsonbaycapitalone.com> and <menardscapitalone.com> domain names, 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 name. 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) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <menardscapitalone.com>, <hudsonbaycapitalone.com> and <neimanmarcuscapitalone.com> domain names, and that Complainant has not authorized Respondent to use the CAPITAL ONE mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Domain Administrator / China Capital,” which does not resemble any of them. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the contested <neimanmarcuscapitalone.com>, <hudsonbaycapitalone.com> and <menardscapitalone.com> domain names to host parked webpages with links to the websites of Complainant’s business competitors. In the circumstances described in the Complaint, we may comfortably presume that Respondent profits from this employment of the domain names. Such use of the domain names is neither a bona fide offering of goods or services by means of them under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy. See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA629217 (Forum August 10, 2015) (finding that a respondent failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name as provided in Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where that respondent used the domain name to host a web page featuring links to online services that competed with those of a UDRP complainant).
See also Persohn v. Lim, FA 874447 (Forum February 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use where it redirected Internet users to a commercial website with links to multiple commercial websites, presumably receiving “click-through fees” in the process). Further see Cengage Learning Inc. v. Myers, FA 1116919 (Forum , January 15, 2008):
[T]he view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.
The Panel therefore 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 <neimanmarcuscapitalone.com>, <hudsonbaycapitalone.com> and <menardscapitalone.com> as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this use of the domain names stands as proof of Respondent’s bad faith in registering and using the domain names. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018):
Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the … domain name pursuant to Policy ¶ 4(b)(iii).
We are likewise convinced by the evidence that Respondent employs the <neimanmarcuscapitalone.com>, <hudsonbaycapitalone.com> and <menardscapitalone.com> domain names, which are confusingly similar to Complainant’s CAPITAL ONE mark, to profit commercially from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain names. Under Policy ¶ 4(b)(iv), this too stands as proof of Respondent’s bad faith in registering and using the domain names. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum February 16, 2007):
The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the … domain name and Complainant’s … mark in order to profit from the goodwill associated with the mark.
See also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018):
Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the … domain name pursuant to Policy ¶ 4(b)(iv).
Therefore, the Panel may find that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
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 <hudsonbaycapitalone.com>, <menardscapitalone.com> and <neimanmarcuscapitalone.com> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 29, 2018
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