Capital One Financial Corp. v. Dr. Keenan Cofield
Claim Number: FA1808001803676
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Dr. Keenan Cofield (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonebank.app>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 28, 2018; the Forum received payment on August 28, 2018.
On August 28, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitalonebank.app> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@capitalonebank.app. Also on August 30, 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.
A timely Response was received and found compliant on September 8, 2018.
On September 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed dr. Katalin Szamosi 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant argues that under Policy ¶ 4(a)(i) Respondent’s <capitalonebank.app> domain name is identical to Complainant’s “CAPITAL ONE” and "CAPITAL ONE BANK" marks. In support of this Complainant asserts that
· domain name is confusingly similar to Complainant’s marks because Respondent includes the entire CAPITAL ONE BANK mark in the disputed domain name,
· the “.app” generic top-level domain (“gTLD’) is insufficient to distinguish a disputed domain name and a mark.
2. Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In support of this Complainant asserts that
· Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the marks;
· Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use;
· Respondent fails to make an active use of the disputed domain name;
· Respondent offered to sell the disputed domain name to Complainant in excess of out-of-pocket costs, in this case $5,000,000.00 in support of which the Complainant provided evidence.
3. Complainant argues that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In support of this Complainant contends that
· Respondent purchased the domain name for the purpose of selling it to Complainant for an amount in excess of out-of-pocket costs;
· Respondent fails to make an active use of the disputed domain name.
B. Respondent
Respondent submitted a response on September 9, 2018 however Respondent failed to make any arguments related to this Proceeding permissible under the Policy.
Complainant is the owner of numerous trademarks around the world protecting the “CAPITAL ONE” and "CAPITAL ONE BANK" marks.
Respondent offered to sell the disputed domain name to Complainant.
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.
Complainant asserts rights in the CAPITAL ONE and CAPITAL ONE BANK marks based upon its registration of the marks with the USPTO and other Intellectual Property Offices. The Panel finds that the Registration of marks with the USPTO and other Offices is sufficient to establish Complainant rights in the 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 copies its registration of the marks with the USPTO (CAPITAL ONE (e.g., Reg. No. 2,065,991 registered May 27, 1997) and CAPITAL ONE BANK (e.g., Reg. No. 3,419,972 registered April 29, 2008)). Therefore, the Panel finds that Complainant has rights in the marks per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <capitalonebank.app> domain name is confusingly similar to Complainant’s marks because Respondent includes the entire CAPITOL ONE and CAPITOL ONE BANK marks in the disputed domain names plus a gTLD. The Panel finds that the addition of a gTLD to a mark is not be sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Respondent includes the entire CAPITOL ONE and CAPITOL ONE BANK marks in the disputed domain name plus the “.app” gTLD. Accordingly the Panel finds that Respondent’s disputed domain name is identical to Complainant’s marks.
As to the second 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), and 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 argues that Respondent lacks rights and legitimate interests in the <capitalonebank.app> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the marks. Where there is no evidence in the record indicating respondent is commonly known by the disputed domain name, WHOIS information may be used to affirm this allegation. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Additionally, lack of authorization from a complainant to use the marks is evidence that respondent is not commonly known by the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides the WHOIS information which identifies the registrant as “Dr. Keenan Cofield,” and no information of the record indicates Respondent was authorized to use Complainant’s marks in any fashion. The Panel finds that Respondent has not submitted any evidence which would rebut the assertion that it is not commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends Respondent has offered to sell the domain name for an amount in great excess of out-of-pocket costs. Use of a domain name to offer it for sale to a complainant in excess of out-of-pocket costs cannot be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Complainant provides emails sent from Respondent offering to sell the domain name for five million dollars. Therefore, the Panel finds that Respondent has offered to sell the domain name in excess of out-of-pocket therefore which cannot be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <capitalonebank.app> domain name in bad faith as Respondent attempts to sell the disputed domain name to complainant for an amount in excess of out-of-pocket costs. The Panel finds that Respondent attempts to sell the disputed domain name to Complainant for an amount in excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). As noted above, Complainant provides screenshots of emails sent from Respondent offering to sell the domain name for five million dollars.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonebank.app> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: October 4, 2018
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