Capital One Financial Corp. v. Lord Oxford
Claim Number: FA1910001869386
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Lord Oxford (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone.network>, 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 31, 2019; the Forum received payment on October 31, 2019.
On October 31, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <capitalone.network> 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 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@capitalone.network>.
Also on October 31, 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 21, 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 be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its statutory and common law rights in the CAPITAL ONE mark described below and submits that the disputed domain name <capitalone.network> is confusingly similar to its CAPITAL ONE trademark because Respondent’s domain name contains Complainant’s mark in its entirety and simply adds the gTLD extension <.network.>.
Complainant submits that the addition of the gTLD extension <.network.> is insufficient to distinguish a disputed domain name and a mark. See Capital One Financial Corp. v. Balbir Johal, FA1602628 (Forum February 27, 2015) (finding that “[t]he domain name contains Complainant’s mark in its entirety and merely attaches to it the generic top-level domain ‘.club.’ Because every domain name requires a gTLD, this alteration of the mark, made in forming the domain name, does not save it from the realm of identity or confusing similarity under the standards of the Policy.”).
In correspondence between Complainant and Respondent attached as an exhibit to the Complaint, Respondent, argued that there is no confusion because the disputed domain should be read as Cap it Alone. Complainant submits that this tortured reading of its famous and well-known CAPITAL ONE mark simply shows the bad faith nature of Respondent. Complainant submits that there is no basis for such a reading.
Firstly, the WHOIS information does not reflect that Respondent is commonly known by the disputed domain name. This fact alone is more than sufficient to satisfy this element. See Capital One Financial Corp. v. Thomas Franklin, FA1707930 (Forum January 20, 2017) (finding no rights or legitimate interests in the domain because “…Respondent is not commonly known by the disputed domain name, based on the WHOIS information…”);
Secondly, Complainant has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant. Such evidence alone is likewise sufficient to establish Respondent’s lack of rights to the disputed domain name. See Capital One Financial Corp. v. yang yang / yang, FA1834866 (Forum April 15, 2019) (concluding that “[t]he WHOIS identifies ‘yang yang / yang’ as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose….Accordingly, the Panel agrees that Respondent is not commonly known by the [disputed] domain names under Policy ¶ 4(c)(ii).”);
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. Respondent’s website resolves to a page that states “There are a LOT of websites steered in here – and their purpose varies.” The page discusses global problems and offers suggestions and solutions to improve the planet.
Complainant submits that the disputed domain name was registered and is being used in bad faith.
Complainant states that when it recently became aware of the infringing domain name registration, it wrote a cease and desist letter to Respondent informing Respondent of Complainant’s rights in the CAPITAL ONE mark and inquiring as to whom provided him authorization to use the CAPITAL ONE mark. In response, Respondent acknowledged that the disputed domain name is “confusingly similar”; stated that “the domain is not that important to (Respondent)” and asked Complainant to make an offer to purchase the domain. Complainant asserts that this is traditional cybersquatting, and evidences lack of legitimate rights (as well as bad faith). See State Farm Mutual Automobile Insurance Company v. shilei, FA1623634 (Forum July 14, 2015) (finding that “…Respondent lacks rights and legitimate interests in the <statefarmdrivesafeandsave.com> domain name under Policy ¶ 4(a)(ii)” because “Respondent has offered the domain for sale to Complainant.”) (citing Williams-Sonoma, Inc. v. Fees, FA937704 (Forum Apr. 25, 2007) (“concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii))”); see also Haas Automation, Inc. v. Josh Butz, FA1429189 (Forum March 23, 2012) (concluding that “…such an offer to sell the domain name indicates that Respondent lacks rights and legitimate interests in the <usedhascncmachine.com> domain name under Policy ¶ 4(a)(ii).”).
Complainant submits that Respondent’s eagerness to sell the <capitalone.network> domain name to Complainant indicates bad faith registration under Policy ¶ 4(b)(i). Respondent stated in his response to Complainant’s cease and desist correspondence, “”you may make an offer to purchase MY property and rights.” See Capital One Financial Corp. v. Igor berezner, FA1789439 (Forum June 25, 2018) (finding that “Respondent’s offer to Complainant to transfer the domain names under compensation is evidence of bad faith pursuant to Policy ¶ 4(b)(i).” (quoting American Anti-Vivisection Soc’y v. “Infa dot Net” Web Services, FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); also quoting Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale)).
Additionally, Complainant submits that Respondent’s registration of the disputed domain name with a privacy service, further evidence that the domain was registered in bad faith. See 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 submits that the fact that tribunals established under the Policy have previously held the CAPITAL ONE mark to be famous further supports a finding of bad faith. See Capital One Financial Corp. v. Capital One Consulting, FA1819367 (Forum January 14, 2019) (finding that Complainant’s “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.… 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… Respondent adopted its name with a view to trading off Complainant's goodwill in its mark…. 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…. Therefore, it is found that Respondent has registered and used the [disputed] domain name in bad faith per Policy ¶ 4(b)(i).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides banking and financial services and is the owner of the CAPITAL ONE trademark and service mark for which it owns the following:
· United States registered trademark CAPITAL ONE, registration number 2065991, registered on May 27, 1997 for “credit card services, namely processing, underwriting, issuing, servicing and administering credit cards and secured cards” in international class 36;
· United States registered trademark CAPITAL ONE, registration number 2065992 registered on May 29, 1997 for “financial services, namely consumer banking, namely secured and unsecured consumer installment lending; real estate financing, namely mortgage lending; and home equity loans” in international class 36.
These registrations are part of Complainant’s large international portfolio of registrations for its CAPITAL ONE, CAPITAL ONE BANK, CAPITAL ONE 360, CAPITAL ONE LABS, CAPITAL ONE AUTO FINANCE, CAPITAL ONE SMARTLINE, CAPITAL ONE MILLION DOLLAR BUTTON & DESIGN, CAPITAL ONE LINE, CAPITAL ONE DESIGN, CAPITAL ONE CREDITWISE and CAPITALONE service marks.
The disputed domain name was registered on July 30, 2019.
In the absence of a Response, there is no information available about Respondent except for that provided in the Complaint including the documentation annexed thereto, the Registrar’s WhoIs, and the Registrar’s response to Complainant’s request for verification of the registration details in this proceeding. In correspondence with Complainant and on the website to which the disputed domain name resolves he styles himself as “Lord Oxford” but on the balance of probabilities this is an assumed name, and Respondent, who uses a privacy service to shield his identity on the WhoIs, continues to hide his real identity.
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 evidence of its rights in the CAPITAL ONE trademark and service mark and similar marks acquired through its ownership of its above-described international portfolio of registrations including United States registered trademark CAPITAL ONE, registration number 2065991, registered on May 27, 1997 and United States registered trademark CAPITAL ONE registration number 2065992 registered on May 29, 1997 for services in international class 36.
The disputed domain name <capitalone.network> consists of Complainant’s trademark and service mark in its entirety, with merely a space between the words “capital” and “one” and the <.nework> gTLD extension.
Panel accepts the suggestion that the disputed domain name, could be read as “cap it alone”. However because the phrase “cap it alone” without any context has no stand-alone meaning, whereas the wording “ capitalone” in a commercial context reflects Complainant’s CAPTIAL ONE mark, this Panel finds that the word “capital” is likely to be perceived as the dominant element of the disputed domain name and Internet users are likely to read the disputed domain name as referring to Complainant’s mark.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name <capitalone.network> arguing that in circumstances where the disputed domain name is confusingly similar to Complainant’s service mark: Complainant has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name; Respondent is not a licensee of Complainant; the WHOIS information does not reflect that Respondent is commonly known by the disputed domain name;
Respondent is not making any use of disputed domain name in connection with a bona fide offering of goods or services or any legitimate non-commercial or fair use; and when Complainant sent a cease and desist letter, Respondent’s immediate response was to request Complainant to make an offer to purchase the disputed domain name.
In such circumstances, the burden of production shifts to Respondent to prove that it has rights or legitimate interest in the disputed domain name. Respondent has not filed any Response and 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).
On the evidence adduced, the disputed domain name had been registered long after Respondent acquired its rights in the CAPITAL ONE mark.
While there is what Complainant has described as a “tortured reading” of the disputed domain name to read “cap it all”, it is unlikely that anyone would read the disputed domain name otherwise than as a reference to Complainant’s CAPITAL ONE mark. The website to which the disputed domain name resolves has the heading “New Website Coming shortly- temporarily housed here There are a LOT of websites steered in here – and their purpose varies extensive”, followed by content relating to ecological matters and “saving the planet”.
Respondent has used a privacy service to redact his identity on the Registrar’s WhoIs and has not made himself known in the course of these proceedings. He has used the name “Lord Oxford” and in his reply to Complainant’s cease and desist letter and on the website to which the disputed domain name resolves. On the balance of probabilities this is an assumed name and Respondent continues to shield his identity.
In these circumstances, and taking into account Respondent’s use of the privacy service to shield the identity and his failure to file a Response, this Panel finds that Respondent’s immediate response to Complainant’s cease and desist letter asking Complainant to make an offer to purchase the disputed domain name are circumstances that indicate that, on the balance of probabilities Respondent registered or acquired the disputed domain name primarily for the purpose of selling the disputed domain name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name.
This Panel takes the inference, as permitted by Policy ¶ 4(b)(i), that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalone.network> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 21, 2019
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