DECISION

 

Capital One Financial Corp. v. Macrosten LTD / Michele Dinoia

Claim Number: FA1906001849402

 

PARTIES

Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA.  Respondent is Macrosten LTD / Michele Dinoia (“Respondent”), Cyprus.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <capitlone.com> registered with Epik Inc..

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 24, 2019; the Forum received payment on June 24, 2019.

 

On June 28, 2019, Epik Inc. confirmed by e-mail to the Forum that the <capitlone.com> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name.  Epik Inc. has verified that Respondent is bound by the Epik 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 July 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2019 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@capitlone.com.  Also on July 2, 2019, 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 July 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is in the banking and financial service industry. Complainant has rights in the CAPITAL ONE mark through 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 Amend. Compl. Ex. A. Respondent’s <capitlone.com> domain name is confusingly similar to Complainant’s mark as Respondent merely removes the letter “a” from CAPITAL and adds the “.com” generic top-level domain (“gTLD”).

 

2.    Respondents has no rights or legitimate interests in the <capitlone.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent offering the disputed domain name for sale.

 

3.    Finally, Respondent’s <capitlone.com>  domain name was registered and is being used in bad faith, as the Respondent is attempting to sell the disputed domain name. Furthermore, Respondent intentionally attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name. Finally, Respondent had knowledge of Complainant rights in its CAPITAL ONE mark.

 

B.   Respondent

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <capitlone.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <capitlone.com> domain name.

 

3.    Respondent registered or used the <capitlone.com> domain name in bad faith.

 

DISCUSSION

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the CAPITAL ONE mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,992,626, registered Aug. 13, 1996). See Amend. Compl. Ex. A. Registration with the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).

                                                                                                                                           

Complainant argues Respondent’s <capitlone.com> domain name is confusingly similar to Complainant’s mark as Respondent merely removes the letter “a” from CAPITAL and adds the “.com” generic top-level domain (“gTLD”). The mere removal of letters within a mark and addition of a gTLD is generally not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). Therefore, the Panel finds Respondent’s <capitlone.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 argues that Respondent has no rights or legitimate interests in the  <capitlone.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as “Macrosten LTD/ Michele Dinoia” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name.  See Compl. Ex. B. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <capitlone.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name, as Respondent is attempting to sell the disputed domain name. Attempting to sell a disputed domain name does not establish respondent’s rights or legitimate interest in the domain name under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Here, Complainant provided a screenshot of the <capitlone.com> domain name’s resolving webpage, which appears to show details on how to purchase the disputed domain name. See Compl. Ex. C. Therefore, the Panel finds Respondent lacks rights or legitimate interests in the disputed domain name, as Respondent is attempting to sell the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues Respondent’s registration and use of the <capitlone.com> domain name was in bad faith, as the Respondent is attempting to sell the disputed domain name. Offering a disputed domain name up for sale can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant’s registered DINERS CLUB mark). Here, Complainant provided a screenshot of the <capitlone.com> domain name’s resolving webpage, which appears to show details on how to purchase the disputed domain name. See Compl. Ex. C. Therefore, the Panel finds Respondent’s registration and use of the <capitlone.com>  domain name was in bad faith under Policy ¶ 4(b)(i).

 

Additionally, Complainant argues Respondent’s registration and use of the <capitlone.com>  domain name was in bad faith, as Respondent intentionally attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name. Use of a disputed domain name to deceive Internet users into believing and affiliation exists between respondent and complainant under Policy ¶ 4(b)(iv). See 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.”). Here, Complainant provided a screenshot of the <capitlone.com> domain name’s resolving webpage, which appears to display Complainant’s mark. See Compl. Ex. C. Therefore, the Panel finds Respondent’s registration and use of the <capitlone.com>  domain name was in bad faith per Policy ¶ 4(b)(iv).

 

Finally, Complainant argues that Respondent had knowledge of Complainant’s CAPITAL ONE mark at the time of registering the <capitlone.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel chooses to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent is offering the domain name for sale on the strength of Complainant’s mark. As such, the Panel determines whether Respondent did have actual knowledge of Complainant’s mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <capitlone.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  August 9, 2019