Capital One Financial Corp. v. Private Registration WhoisGuardService.com
Claim Number: FA1106001392769
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, III, Virginia, USA. Respondent is Private Registration WhoisGuardService.com (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonemobile.com>, registered with Nanjing Imperiosus Technology Co. Ltd.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 9, 2011. The Complaint was received in both Chinese and English.
On June 9, 2011, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <capitalonemobile.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. Ltd. 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 June 17, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 7, 2011 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@capitalonemobile.com. Also on June 17, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <capitalonemobile.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or legitimate interests in the <capitalonemobile.com> domain name.
3. Respondent registered and used the <capitalonemobile.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Capital One Financial Corp., was founded in 1988 as a financial institution, pioneering the mass marketing of credit cards. Complainant owns the CAPITAL ONE mark which it uses for the provision of its financial products and services. Complainant holds numerous trademark registrations for its CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,065,992 issued May 27, 1997).
Respondent, Private Registration WhoisGuardService.com, registered the <capitalonemobile.com> domain name on November 12, 2009. The disputed domain name redirects to a search engine website providing third-party links to other financial institutions, including some of Complainant’s competitors.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 contends that it has established rights in its CAPITAL ONE mark. Panels in the past have determined that a complainant may prove its rights in a mark through registration with a national trademark authority. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). As long as Complainant has registered its mark within some jurisdiction, it is unnecessary for Complainant to register its mark within the country of Respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant has a number of trademark registrations for its CAPITAL ONE mark with the USPTO (e.g., Reg. No. 2,065,992 issued May 27, 1997). The Panel finds that Complainant has demonstrated its rights in the CAPITAL ONE mark by registering with a national trademark authority pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <capitalonemobile.com> domain name is confusingly similar to its CAPITAL ONE mark. Respondent’s disputed domain name incorporates the entire CAPITAL ONE mark and alters it only by deleting the space between the words of the mark, adding the descriptive word “mobile,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting spaces and adding a gTLD do not adequately distinguish the domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Also, the addition of the descriptive word “mobile,” which relates to goods provided under Complainant’s CAPITAL ONE mark, does not serve to avoid a finding of confusing similarity. See Goldfish Card Services Limited v. M Connolly, FA 1000020 (Nat. Arb. Forum July 11, 2007) (“The addition of the terms “credit” and “card,” which have an obvious relationship to Complainant’s mark, do not distinguish the disputed domain name from Complainant’s mark.). Therefore, the Panel concludes that Respondent’s <capitalonemobile.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant states that Respondent should be considered as having no rights or legitimate interests in the disputed domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel held, “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.” Here, Complainant has demonstrated a prima facie case in support of its arguments. Respondent failed to submit a response to the Complaint, which implies that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will examine the record for any indication that Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <capitalonemobile.com> domain name. The WHOIS information does not suggest that Respondent has any association with the disputed domain name. Moreover, Complainant claims that it has never authorized Respondent to use its CAPITAL ONE mark within the domain name. Given these findings, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <capitalonemobile.com> domain name resolves to a commercial search engine with third-party links to financial services and credit card websites in direct competition with Complainant. Respondent likely collects click-through fees from these links. The Panel concludes that Respondent’s use of the disputed domain name to operate a website displaying links to other financial institutions, as well as “related searches” that may be of interest to Complainant’s customers, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant contends that Respondent registered and is using the <capitalonemobile.com> domain name to divert Internet users to its own website, thereby disrupting Complainant’s business. Internet users searching for Complainant’s financial and credit card services may find Respondent’s website along with the third-party links and may purchase similar services from a competing business as a result. The Panel finds that Respondent’s registration and use of the disputed domain name does disrupt Complainant’s business and therefore, constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent’s <capitalonemobile.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark and the resolving website contains links that may be of interest to Complainant’s customers. These circumstances may create a likelihood of confusion among Internet users as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and featured links. The Panel infers that Respondent receives click-through fees from these third-party links. Therefore, Respondent is attempting to commericially gain from the confusion surrounding its disputed domain name, which is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonemobile.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 25, 2011
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