Capital One Financial Corp. v. Zhichao Yang
Claim Number: FA1211001473336
Complainant is Capital One Financial Corp. (“Complainant”), represented by Elizabeth Lim Brooks of 951 East Byrd Street, Virginia. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capialonecreditcard.com>, <capitalonecrad.com>, <capitlonecard.com>, <capiralonebank.com>, <capitalonecrd.com>, <capitlonecreditcard.com>, <capitaalonebank.com>, <capitalonecredicards.com>, <capitolonee.com>, <capitalinecard.com>, <capitaloneo.com>, <captalbank.com>, <capitaloecard.com>, <capitalonescard.com>, <captaone.com>, <capitaloenbank.com>, <capitalonrbank.com>, <captialoneonline.com>, <capitaloje.com>, <capitaonecards.com>, <capitaloncard.com>, <capitaonecredit.com>, <captitalonedirect.com>, <capitaloncreditcard.com>, <capitaonecreditcards.com>, <cpitalonecard.com>, <capitalonecad.com>, <capitlaonecard.com>, <mycapitalonemastercard.com>, and <wwwmycapitaloneprepaid.com>, registered with Godaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2012; the National Arbitration Forum received payment on November 29, 2012.
On November 30, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <capialonecreditcard.com>, <capitalonecrad.com>, <capitlonecard.com>, <capiralonebank.com>, <capitalonecrd.com>, <capitlonecreditcard.com>, <capitaalonebank.com>, <capitalonecredicards.com>, <capitolonee.com>, <capitalinecard.com>, <capitaloneo.com>, <captalbank.com>, <capitaloecard.com>, <capitalonescard.com>, <captaone.com>, <capitaloenbank.com>, <capitalonrbank.com>, <captialoneonline.com>, <capitaloje.com>, <capitaonecards.com>, <capitaloncard.com>, <capitaonecredit.com>, <captitalonedirect.com>, <capitaloncreditcard.com>, <capitaonecreditcards.com>, <cpitalonecard.com>, <capitalonecad.com>, <capitlaonecard.com>, <mycapitalonemastercard.com>, and <wwwmycapitaloneprepaid.com> domain names (the “disputed domain names”) are registered with Godaddy.com, LLC and that Respondent is the current registrant of the names. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC 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 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 2012 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@capialonecreditcard.com, postmaster@capitalonecrad.com, postmaster@capitlonecard.com, postmaster@capiralonebank.com, postmaster@capitalonecrd.com, postmaster@capitlonecreditcard.com, postmaster@capitaalonebank.com, postmaster@capitalonecredicards.com, postmaster@capitolonee.com, postmaster@capitalinecard.com, postmaster@capitaloneo.com, postmaster@captalbank.com, postmaster@capitaloecard.com, postmaster@capitalonescard.com, postmaster@captaone.com, postmaster@capitaloenbank.com, postmaster@capitalonrbank.com, postmaster@captialoneonline.com, postmaster@capitaloje.com, postmaster@capitaonecards.com, postmaster@capitaloncard.com, postmaster@capitaonecredit.com, postmaster@captitalonedirect.com, postmaster@capitaloncreditcard.com, postmaster@capitaonecreditcards.com, postmaster@cpitalonecard.com, postmaster@capitalonecad.com, postmaster@capitlaonecard.com, postmaster@mycapitalonemastercard.com, and postmaster@wwwmycapitaloneprepaid.com. Also on December 4, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s disputed domain names are confusingly similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns the following trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its CAPITAL ONE mark, used in connection with financial services:
CAPITAL ONE Reg. No. 1,992,626 registered on August 13, 1996 & CAPITAL ONE BANK Reg. No. 3,993,433 registered on July 12, 2011.
Respondent registered the disputed domain names on different dates, the earliest of which is March 29, 2012, and uses them to redirect Internet users to competing and unrelated third-party websites.
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(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.”).
The Panel finds that registration of its CAPITAL ONE mark with the USPTO satisfies Complainant’s burden of proving rights, regardless of where Respondent resides. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); 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).
Respondent’s disputed domain names are confusingly similar to Complainant’s CAPTIAL ONE mark because the domain names are merely typographical errors of the mark, which do not sufficiently distinguish the disputed domain name from Complainant’s mark. The addition of generic terms, such as “card,” “bank,” “credit card,” “direct,” and “prepaid,” and the generic top-level domain (“gTLD”) “.com,” is also insufficient to distinguish the disputed domain names from the mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). The Panel also finds that the addition of “www” to the <wwwmycapitaloneprepaid.com> domain name fails to differentiate it from Complainant’s marks. See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark).
Therefore, the Panel concludes that each domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant states that it has never authorized Respondent to use its CAPITAL ONE mark, and that Respondent is not a licensee of Complainant. Complainant argues that Respondent is not commonly known by the disputed domain names, noting that the WHOIS information for the domain names does not reflect that Respondent is commonly known by any of the domain names. Indeed, the WHOIS record for all of the disputed domain names lists “Zhichao Yang” as the registrant. Previous panels have found that when the WHOIS information and all other veins of evidence show no link between a respondent and a disputed domain name, the respondent is not in fact commonly known by the name. 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). Thus, the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant contends that twenty-eight of Respondent’s disputed domain names provide links to other financial institutions, including some of Complainant’s competitors. The two remaining domain names, <captialoneonline.com> and <capitaalonebank.com>, redirect Internet users to websites unrelated to Complainant’s marks. Previous panels have found that when a domain name’s resolving website offers links to third-party websites, presumably for referral fees, the respondent has made neither a Policy ¶ 4(c)(i) bona fide offering of goods and services nor a Policy ¶ 4(c)(iii) noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Accordingly, the Panel finds that Respondent fails to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and that Respondent has not made a bona fide offering of goods on any of the disputed domain names under Policy ¶ 4(c)(i).
Complainant also argues that Respondent registered all of the disputed domain names by using Complainant’s mark in connection with common misspellings of both the Complainant’s mark and/or some other generic terms. This is typosquatting and is additional evidence that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Previous panels have held in similar situations that typographical errors and the transposition of letters in a mark illustrates that a respondent/registrant of a domain name does not have independent rights or legitimate interests in the domain name. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain names resolve to a website with some form of a commercial search engine leading to the display of links to competing third parties. Previous panels have agreed that the use of a disputed domain name to operate commercial search engines constitutes a bad faith disruption of a complainant’s business. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Thus, the Panel finds that the <capialonecreditcard.com>, <capitalonecrad.com>, <capitlonecard.com>, <capiralonebank.com>, <capitalonecrd.com>, <capitlonecreditcard.com>, <capitalonecredicards.com>, <capitolonee.com>, <capitalinecard.com>, <capitaloneo.com>, <captalbank.com>, <capitaloecard.com>, <capitalonescard.com>, <captaone.com>, <capitaloenbank.com>, <capitalonrbank.com>, <capitaloje.com>, <capitaonecards.com>, <capitaloncard.com>, <capitaonecredit.com>, <captitalonedirect.com>, <capitaloncreditcard.com>, <capitaonecreditcards.com>, <cpitalonecard.com>, <capitalonecad.com>, <capitlaonecard.com>, <mycapitalonemastercard.com>, and <wwwmycapitaloneprepaid.com> domain names were registered in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent’s intentional misspelling of Complainant’s mark, typosquatting, is adidtional evidence of bad faith use and registration of the disputed domain names pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capialonecreditcard.com>, <capitalonecrad.com>, <capitlonecard.com>, <capiralonebank.com>, <capitalonecrd.com>, <capitlonecreditcard.com>, <capitaalonebank.com>, <capitalonecredicards.com>, <capitolonee.com>, <capitalinecard.com>, <capitaloneo.com>, <captalbank.com>, <capitaloecard.com>, <capitalonescard.com>, <captaone.com>, <capitaloenbank.com>, <capitalonrbank.com>, <captialoneonline.com>, <capitaloje.com>, <capitaonecards.com>, <capitaloncard.com>, <capitaonecredit.com>, <captitalonedirect.com>, <capitaloncreditcard.com>, <capitaonecreditcards.com>, <cpitalonecard.com>, <capitalonecad.com>, <capitlaonecard.com>, <mycapitalonemastercard.com>, and <wwwmycapitaloneprepaid.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 9, 2013
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