Capital One Financial Corp. v. CAPITAL ONE CONSULTING
Claim Number: FA1812001819367
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is CAPITAL ONE CONSULTING (“Respondent”), represented by Martina Hladíková, Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneconsulting.com>, registered with Tucows Domains Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2018; the Forum received payment on December 4, 2018.
On December 4, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <capitaloneconsulting.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 December 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@capitaloneconsulting.com. Also on December 7, 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 determined to be complete on December 27, 2018.
On December 31, 2018, Additional Submission was received by the Forum, which is in compliance with Supplemental Rule 7.
On December 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Natalia Stetsenko 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, Capital One Financial Corp., is a major financial institution headquartered in McLean, Virginia. Complainant has rights in the CAPITAL ONE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,992,626, registered Aug. 13, 1996). See Compl. Ex. A1. Respondent’s <capitaloneconsulting.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark, as the domain name includes the entire mark along with the generic term “consulting” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <capitaloneconsulting.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the CAPITAL ONE mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent redirects Internet users to a webpage that offers competing financial and loan services. Furthermore, Respondent is attempting to pass off as Complainant for commercial gain. Additionally, Respondent offered to sell the <capitaloneconsulting.com> domain name back to Complainant.
Respondent registered and is using the <capitaloneconsulting.com> domain name in bad faith because Respondent disrupts Complainant’s business by creating a false association between Respondent and Complainant. Furthermore, Respondent operates a competing webpage. Moreover, Respondent attempts to pass off as Complainant for commercial gain. Additionally, Responded offered to sell the disputed domain name to Complainant. Finally, Respondent registered the <capitaloneconsulting.com> domain name under a privacy service in an attempt to conceal its identity.
B. Respondent
Respondent does not dispute the confusing similarity between the <capitaloneconsulting.com> domain name and the CAPITAL ONE mark.
Respondent has rights and legitimate interests in the <capitaloneconsulting.com> domain name because Respondent operates a legitimate business in Czech Republic and is accounted for in the Czech commercial register. Furthermore, Respondent is not attempting to divert customers away from Complainant’s webpage and offers different services than those of Complainant.
Respondent did not register the <capitaloneconsulting.com> domain name in bad faith because Respondent is not attempting to create a likelihood of confusion with Complainant’s marks. Respondent is not passing off as Complainant because it uses a color scheme at the disputed domain name that is commonly used. Furthermore, Respondent’s offer to sell the domain name was not in bad faith because it was unaware of its trademark infringements and was trying to reach a settlement. Additionally, Respondent fails to compete with Complainant’s business because it offers consulting services which differ from Complainant’s banking services.
C. Additional Submissions
Respondent concedes its domain name is confusingly similar to the CAPITAL ONE trademark and that the use of the term “consulting” fails to eliminate any confusion.
Complainant’s rights in the CAPITAL ONE trademark are extensive and well established. This Tribunal has found the CAPITAL ONE mark to be famous.
There is no dispute Capital One obtained such rights in the CAPITAL ONE trademark prior to July 9, 2013, the date Respondent registered the domain name.
The materials submitted by Respondent in support of its “commonly known” argument fail both as a matter of law and factually. Accordingly, Respondent has failed to meet its burden of submitting “concrete evidence” in support of its “legitimate rights.”
Respondent’s argument it has legitimate rights because it is not trying to divert Complainant’s customers fails.
Respondent has registered and used the domain name in bad faith because: 1) it tried to sell the domain name to Complainant; 2) Respondent offers competing services, while the term “consulting” does not remove the likelihood of confusion. If anything, it enhances that argument of bad faith; 3) use of privacy shield supports a finding of bad faith; 4) because this Tribunal has previously found the CAPITAL ONE mark to be famous, this supports finding that Respondent’s registration of the domain name was in bad faith.
Complainant is holder of registrations for the CAPITAL ONE marks before the USPTO. See Compl. Ex. A1.
Complainant also owns registrations for the CAPITAL ONE mark in more than fifteen countries, including Canada, Mexico, Germany, Austria, India, Monaco and Chile. The services for these registrations include banking and financial services. See Compl. Ex. A2.
Respondent is a company registered in the Czech Republic and doing its business under the name CAPITAL ONE Consulting s.r.o.
The <capitaloneconsulting.com> domain name was registered on July 9, 2013.
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 has established rights in the CAPITAL ONE mark based upon registration of its mark with the USPTO. Complainant provides the registration information for the CAPITAL ONE marks (e.g. US Reg. No. 1,992,626, registered Aug. 13, 1996). See Compl. Ex. A1. Registration of a mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <capitaloneconsulting.com> domain name is confusingly similar to the CAPITAL ONE mark, as the name contains the entire mark plus the generic term “consulting” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
The Panel therefore determines that the <capitaloneconsulting.com> domain name is confusingly similar to the CAPITAL ONE mark per Policy ¶ 4(a)(i).
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 submitted evidence in support of its allegation that its rights in the CAPITAL ONE trademark are extensive and well established, particularly with reference to the earlier decisions of this Tribunal that has found the CAPITAL ONE mark to be famous. See, inter alia, Capital One Financial Corp. v. Mark Williams, FA1611001702474 (Forum Dec. 7, 2016) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid, subsisting, and famous trademark.”). Also, Complainant has shown that it obtained such rights in the CAPITAL ONE trademark prior to July 9, 2013, the date Respondent registered the domain name. See Compl. Ex. B. According to Complainant, it never authorized Respondent to use the CAPITAL ONE mark. Based on these facts, the Panel finds that a prima facie exists.
Addressing the arguments of Respondent in favor of rights and legitimate interest requires analyzing the legitimate rights/interests and bad faith issues simultaneously.
To prove its rights and legitimate interests, Respondent relies on the „commonly known” defense based on its corporate identifier, which is CAPITAL One Consulting, s.r.o. where “s. r. o.” stands for “společnost s ručením omezeným”, the limited liability company in Czech.
According to Respondent, this proves its legitimate interest in domain name, because the company is registered in Czech Republic under this name and „everyone knows him under this name”.
A full (detailed) extract from the Commercial Register accessible at <https://or.justice.cz/ias/ui/rejstrik> provided by Respondent in Annex 1 (not numbered in the response, original title „Úplný výpis”) shows that on April 9, 2013 the company was registered under the name XWEJNI BAY Consulting s.r.o. Its registered activities covered rental of residential and non-residential property.
On July 8, 2013, just one day prior to the registration of the disputed domain name, the record was changed, and the company took the name „CAPITAL ONE Consulting s.r.o.”, while its registered activities were extended to the manufacture, sales and services not listed in annexes 1-3 of the Trade Act.
Relying on this documents and Articles of Incorporation of the Company and its Annual Accounts, Respondent states that this proves the common knowledge of Respondent’s name which corresponds with the domain name and in conclusion also his legitimate interest in the domain name. In support of this position, Respondent refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), particularly its paragraph 2.3 that reads:
“Absent genuine trademark or service mark rights, evidence showing that a respondent is commonly known by the domain name may include: a birth certificate, driver’s license, or other government-issued ID; independent and sustained examples of secondary material such as websites or blogs, news articles, correspondence with independent third parties; sports or hobby club publications referring to the respondent being commonly known by the relevant name; bills/invoices; or articles of incorporation.”
However, in the same paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) it is stated:
„The respondent must however be “commonly known” (as opposed to merely incidentally being known) by the relevant moniker (e.g., a personal name, nickname, corporate identifier), apart from the domain name. Such rights, where legitimately held/obtained, would prima facie support a finding of rights or legitimate interests under the UDRP.” (emphasis added)
So, it is not sufficient to merely show that Respondent is associated with the respective corporate identifier. Such rights, to serve as prima facie support of finding of rights or legitimate interest, would have to be legitimately held/obtained. This is particularly why, as further noted in the cited WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, „Panels will additionally typically assess whether there is a general lack of other indicia of cybersquatting”.
Under other circumstances this Panel would have found the provided evidence to be sufficient to establish rights and legitimate interests in the domain name, but there is a number of circumstances in this case that cannot be overlooked.
There is a consensus among previous Panels that, when facing a question whether a certain defense can apply to show the rights and legitimate interests, the balance of probabilities that Respondent adopted its name with a view to trading off Complainant's goodwill in its mark has to be checked. For example, see Research in Motion Limited v. One Star Global LLC, Case No. D2009-0227 (WIPO April 9, 2009) where when deciding if resellers right can be applied as a proof of rights and legitimate interests, the Panel noted: „It is necessary to look at the use actually made of the Domain Name and the nature of the website that operates from it to see whether the registration and use is abusive.”.
According to Respondent his domain is used for bona fide offering of services because:
1. Respondent is not trying to divert consumers to the trademark of Complainant because Capital One Bank Financial Corp. is not widely known among ordinary consumers in the Czech Republic, hence if a Czech consumer looks on the Internet for the Capital One Consulting it is because he/she is familiar with the Czech company and is not interested in the US corporation;
2. Respondent is not diverting Capital One customers to Respondent because the use of the term “consulting” sufficiently differentiates it from the business of Complainant;
3. The similarity of offered services is just the first sight impression. Respondent is not a banking institution as Complainant and offers only consulting services related to the financial sector, which is why the term „consulting” is used in his company name;
4. Complainant’s marks are not famous because none of them is registered in the EU as a whole or in the Czech Republic. Even the ‘CAPITAL ONE’S MY PHOTOCARD’ has expired a few years ago. Also the trademark CAPITAL ONE used to be registered in the Czech Republic, but it was cancelled in 2008, i.e. 5 years before Complainant incorporated his company. Even if he would have found out about this trademark he had a reasonable assumption that since the trademark is not prolonged, the owner does not have interest in using it on the Czech market.
Addressing these allegations, the Panel has to note the following:
1) While one can suppose that an ordinary Czech consumer may not necessarily be familiar with Complainant’s services, first of all because of the lack of Complainant’s local presence, the allegation of „no diversion” is completely groundless for the following reasons.
Respondent’s business is not dealing with ordinary consumers, but targets a specific consumer audience, particularly corporate clients seeking consulting services in the field of finance. These relevant consumers would be well informed of banking institutions worldwide and would certainly recognize the „Capital One” name, hence the false association with Complainant’s business is highly likely.
2) Analysis of the contents of Respondent’s website (See Compl. Exhibit C) shows the following:
- the logo chosen by Respondent is confusingly similar to Complainant’s registered logo. Respondent’s argument that the used color pattern is pretty common is groundless, because the overall impression created by Respondent’s logo is very close to that of Complainant’s mark due to the similarity not only in color pattern, but also in fonts and overall graphic representation. Moreover, it is not immediately clear to Internet users visiting Respondent’s website that it is not operated or endorsed by Complainant. Even when Internet user realizes that the business is located in the Czech Republic based on the provided address, it is still not obvious that it is not affiliated with Complainant.
Hence, the Panel comes to a conclusion that such use by Respondent qualifies for passing off as Complainant in determination of Policy ¶¶ 4(c)(i) or (iii).
Use of a disputed domain name to commercially gain by passing off as Complainant may not be considered a bona fide offering of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
- Respondent positions itself as an international business. In the „Mission” section of its website, Respondent states: „Capital One Consulting is a company that operates internationally to supplying services in the field of banking and financial counseling.” As may be noted, Respondent particularly refers to „banking counseling”. Also, „Banking Consulting” keeps the top position in the „Menu” section. Hence, Respondent clearly offers competing services. There is no doubt in that a relevant consumer might think of possible endorsement by or affiliation of Respondent’s business with Complainant. The corporate identifier „s.r.o.” never appears on the website and no clear information on the origin of the business allowing to differentiate it from Complainant is provided.
Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a 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).”).
3) Banking institutions generally provide financial consultancy services, hence the statement that the term „consultancy” sufficiently differentiates Respondent’s business is groundless.
4) the statement that Complainant’s marks are not famous because none of them are registered in the EU, and in the Czech Republic particularly, is at least not accurate. First of all, Respondent disregards the fact that Complainant’s EU trademark registrations (CTMs at the time) Nos. 4517249 and 4516951 (See Compl. Ex A, Attachment 2) actually did not expire until June 30, 2015. It means Respondent registered its company and the domain name in violation of Complainant’s trademark rights which at the time of registration were also valid in the Czech Republic. However, had this not been the case, Respondent would still have not succeeded on their arguments because Capital One has established rights in its CAPITAL ONE trademark throughout Europe and the world long prior to the registration of the disputed domain name. See C.V. Starr & Co. v. Palmer, FA 1801001769174 (Forum Mar. 27, 2017) (“Moreover, even if Respondent has obtained a corporate name that was similar to the domain names in dispute, that would not establish superior rights over those of Complainants, who had established rights in Asia and throughout the world long prior to the registration of the disputed domain name.”
Finally, Respondent’s attempts to offer the <capitaloneconsulting.com> domain name for sale further indicates it does not have rights or legitimate interests in the name. A respondent’s offer to sell a domain name to the general public can indicate the respondent lacks rights and legitimate interests in the name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
Respectively, this Panel finds that the domain name registration and use by Respondent is not consistent with a pattern of bona fide activity. Therefore, Respondent does not have rights and legitimate interests in the disputed domain name domain name per Policy ¶ 4(a)(ii).
As already shown in the above analysis, this Panel finds that Respondent has not registered and used its domain name in bona fide because passing off in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Previous Panels have found that use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). It is therefore concluded that Respondent’s registration and use constitute bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
When analyzing Respondent’s actual knowledge of Complainant’s mark, this Panel based its position not only on the fact that the CAPITAL ONE mark was recognized famous by numerous previous Panels (See Capital One Financial Corp. v. Mark Williams, FA1611001702474 (Forum Dec. 7, 2016) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid, subsisting, and famous trademark.”) and a consensus that when registering a domain name incorporating a famous mark, Respondent had actual knowledge of Complainant’s mark (See ADP, LLC v. Jacobs, FA1705001730293 (Forum June 16, 2017) (“It is hard to disagree that Respondent’s use of the disputed domain name demonstrates nothing else, but Respondent’s actual knowledge of Complainant’s marks and further supports the finding that Respondent registered and uses the domain name in bad faith per Policy ¶ 4(a)(iii). “).
This Panel recognizes that under certain circumstances, a different finding is possible, like in the case Sony Kabushiki Kaisha aka Sony Corporation v. Sony Holland, Case No. D2008-1025 (WIPO October 2, 2008) ( A respondent, living in a country distant from a complainant trade mark owner, might have become commonly known by a disputed domain name without ever having heard of the complainant. In such a case, the Panel considers that there would be no doubt that the respondent would be entitled to the safe harbor protection of paragraph 4(c)(ii) of the Policy.). However, the Panel in the cited case came to this conclusion only because the Panel was not persuaded on the balance of probabilities that Respondent adopted the name with a view to trading off Complainant's goodwill in its mark. This is not the case here because the circumstances of the present case prove to the contrary.
In the Panel’s opinion the following additional circumstances show that Respondent registered the domain name having Complainant’s mark in mind:
- Respondent adopted the Capital One s.r.o. name when it extended its services to cover those that are competing with Complainant’s services;
- the domain name incorporating Complainant’s mark was registered the very next day after the respective records were made in the Commercial Register;
- responding to Complainant’s C&D letter, Respondent offered to sell its company and/or the domain name. See Compl. Ex. D.(However, if the company CAPITAL One Services is interested in the acquisition of the company of our client and/or in the transfer of the domain name, our client is prepared to discuss the terms and prices). Based on this, the Panel believes that “settlement negotiation” defense sought by Respondent is not applicable here, because the subject of settlement is obviously exceeding the out-of-pocket expenses involved with the registration of the domain name. This further proves that Respondent was aware of the value associated with the name CAPITAL ONE and registered the domain name to sell the name for a profit. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Therefore, it is found that Respondent has registered and used the <capitaloneconsulting.com> domain name in bad faith per Policy ¶ 4(b)(i).
Therefore, the requirements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneconsulting.com> domain name be TRANSFERRED from Respondent to Complainant.
Natalia Stetsenko, Panelist
Dated: January 14, 2019
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