Capital One Financial Corp. v. evans newton
Claim Number: FA1910001868122
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is evans newton (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital360one.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 23, 2019; the Forum received payment on October 23, 2019.
On October 23, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <capital360one.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 October 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@capital360one.com. Also on October 23, 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 November 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name <capital360one.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the CAPITAL ONE and CAPITAL ONE 360 marks acquired through its ownership of the international portfolio of registered trademarks described below; its claimed use of the CAPITAL ONE service mark in its banking and financial services business as a publicly traded company since 1994; and its adoption and use of the CAPITAL ONE 360 mark since 2009.
Complainant submits that the disputed domain name <capital360one.com> is confusingly similar to Complainant’s CAPITAL ONE and CAPITAL ONE 360 service marks. The disputed domain name contains Complainant’s CAPITAL ONE mark in its entirety and simply adds the term “360”. The additional term “360” together with the words “capital” and “one” in the disputed domain name are the same elements as in Complainant’s CAPITAL ONE 360 service mark.
Complainant submits that it is axiomatic that the addition of a term to a generic top-level domain, such as “.com”, is insufficient to distinguish a disputed domain name and a mark.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name because firstly the WHOIS information does not reflect that Respondent is commonly known by the disputed domain name.
Secondly, Complainant has never authorized Respondent to use its CAPITAL ONE or CAPITAL ONE 360 trademarks, much less use the mark as a domain name, and Respondent is not a licensee of Complainant.
Thirdly, Respondent’s lack of rights or legitimate interests in the disputed domain name is further evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. There is no content on the website to which the disputed domain name resolves, despite the fact that Respondent registered the domain more than five months ago. This failure to use the domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). In this regard Complainant cites inter alia the decision of the panel in Capital One Financial Corp. v. yang yang / yang, FA1834866 (Forum April 15, 2019) (finding that “the resolving web pages associated with each domain name…display the error message ‘This site can’t be reached.’ Accordingly, the Panel finds that Respondent fails to make use of the domain names, failing to use the domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Fourthly Complainant submits that Respondent is not using the disputed domain name for any legitimate non-commercial or fair use per Policy ¶ 4(c)(iii), citing inter alia the decision of the panel in Capital One Financial Corp. v. EuroCable Magyarorszag Kft., FA1684340 (Forum August 15, 2016) (concluding that “…a respondent lacks rights and legitimate interests where it fails to make any active use of a domain.”).
Complainant argues that the disputed domain name was registered and is being used in bad faith, firstly because Respondent is using the disputed domain name <capital360one.com> to resolve to a blank or inactive page. Complainant submits that such failure to actively use a domain name amounts to passive holding which constitutes bad faith registration and use, citing inter alia the decision of the panel in Capital One Financial Corp. v. yang yang / yang, FA1834866 (Forum April 15, 2019) (concluding that “Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.”).
Complainant argues that the fact that Respondent registered the disputed domain name with a privacy service creates a rebuttable presumption that the disputed domain name was registered in bad faith. In this regard Complainant relies on the decision of the panel inter alia in Capital One Financial Corp. v. Maddisyn Fernandes / Fernandes Privacy Holdings, FA1722770 (Forum April 25, 2017) (finding that “…using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use in the commercial context…this Panel is willing to find bad faith registration and use on this ground alone.”).
Lastly, Complainant asserts that the fact that previous panels have held the CAPITAL ONE mark to be famous further supports a finding of bad faith in the circumstances.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is a publicly traded corporation that provides banking and financial services and has rights in the CAPITAL ONE and CAPITAL ONE 360 marks through the ownership of or the ownership of a large international portfolio of registered trademarks by itself and wholly-owned subsidiaries, of a large international portfolio of trademark registrations for the CAPITAL ONE and CAPITAL ONE 360 marks. Significantly in respect of this Complaint the portfolio includes U.S. registered trademark CAPITAL ONE 360, registration number 4401562, registered on September 10, 2013 for “banking services” in international class 36.
The disputed domain name was registered on April 7, 2019 and resolves to a web page that states:” Capital Investment: Site Maintenance We’ll be back soon! Chill and relax we have big things in store. Sorry for the inconvenience but we’re performing some maintenance at the moment. If you need to you can always contact us, otherwise we’ll be back online shortly! — The Team”
In the absence of any Response in this proceeding, the only information available about Respondent is that provided in the Complaint, the Registrar’s WhoIs, and the Registrars response to the Forum’s request for verification of the registration details of the disputed domain name. The identity of the Respondent was concealed on the public WhoIs as the disputed domain name was registered using a privacy service.
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”).
Complainant has provided ample, unchallenged evidence of its ownership of the CAPITAL ONE and CAPITAL ONE 360 marks for which it owns the abovementioned portfolio of registered trademarks. Complainant has also built up a substantial goodwill in the use of these service marks over a number of years.
The disputed domain name <capital360one.com> contains each of the three elements of the CAPITAL ONE 360 mark, albeit not in the same order. Furthermore, the disputed domain name contains the CAPITAL ONE mark in its entirety. The three elements namely the word “capital”, the number “360” and the word “one” in combination in the disputed domain name are confusingly similar to both of the marks upon which Complainant relies in this Complaint. There is no other distinguishing element in the disputed domain name.
In the circumstances, this Panel finds that the disputed domain name is confusingly similar to the service marks CAPITAL ONE and CAPITAL ONE 360 in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name. It has convincingly alleged that firstly the WHOIS information does not reflect that Respondent is commonly known by the disputed domain name; secondly, Complainant has never authorized Respondent to use its CAPITAL ONE or CAPITAL ONE 360 trademarks as a domain name or otherwise’ use the mark and Respondent is not a licensee of Complainant; thirdly, Respondent is passively holding the disputed domain name which is not a use in connection with a bona fide offering of goods or services; and fourthly such passive holding of the disputed domain name does not constitute a legitimate noncommercial or fair use.
In such circumstances, the burden of production shifts to Respondent to prove rights or legitimate interests in the disputed domain name. As no Response as been filed, Respondent has failed to discharge the burden of production.
This Panel finds therefore that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
While each of the three elements “capital”, “360” and “one” in the disputed domain name are commonplace words and a number, the combination has no obvious meaning and on the balance of probabilities the disputed domain name was created and registered because it contained these three elements which are identical to, and reference, the three elements of Complainant’s CAPITAL ONE 360 trademark.
In the absence of any explanation from Respondent this Panel finds on the balance of probabilities that the disputed domain name was registered in bad faith, in circumstances where the registrant was actually aware of Complainant’s trademark and reputation and furthermore this Panel finds on the balance of probabilities the disputed domain name was registered in order to take predatory advantage of Complainant’s goodwill and reputation.
In the circumstances outlined in the Complaint, which has not been challenged by Respondent, where Respondent is passively holding the disputed domain name and taking into account the distinctive character of the combination of the three elements “capital”, 360” and “one” in the domain name and mark; the reputation of Complainant’s mark as used by a publicly traded corporation; Respondent’s failure to submit a Response or to provide any evidence of actual or contemplated good-faith use; and the use of a privacy service to conceal Respondent’s identity; and that it is implausible that Respondent could put the disputed domain name to any good faith use, this Panel finds that on the balance of probabilities the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capital360one.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 14, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page