Capital One Financial Corp. v. DCH
Claim Number: FA1302001487835
Complainant is Capital One Financial Corp. (“Complainant”), represented by Elizabeth L. Brooks, Virginia, USA. Respondent is DCH (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonebank.org>, registered with Fabulous.com Pty Ltd..
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2013; the National Arbitration Forum received payment on February 28, 2013.
On March 3, 2013, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <capitalonebank.org> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty 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 March 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2013 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@capitalonebank.org. Also on March 4, 2013, 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 April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, either directly or via one of its wholly-owned subsidiaries, owns over 100 pending applications or registrations for Capital One all over the world and in the United States.
For example, as indicated in the chart below, Complainant owns registrations in the United States for the CAPITAL ONE mark and the CAPITAL ONE BANK mark. Complainant provides banking, financial, and credit card services under these registrations.
[Table listing thirteen US-Registered marks removed for formatting purposes.]
Complainant also owns registrations for the CAPITAL ONE mark in more than fifteen countries, including Canada, Mexico, Brazil, Austria, India, Monaco and Chile. The services for these registrations include banking, financial, and credit card services.
[Table listing thirty non US-Registered marks removed for formatting purposes.]
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] Complainant has legitimate rights to the CAPITAL ONE and CAPITAL ONE BANK marks, and the disputed domain name <capitalonebank.org> is identical or confusingly similar to Complainant’s trademarks. UDRP Policy ¶4(a)(i); See also Capital One Financial Corp. v. Domain Tech Enterprises/Domain Administrator, FA1375034 (Nat. Arb. Forum April 5, 2011) (finding that Complainant Capital One Financial Corp. has legitimate rights to the CAPITAL ONE trademark based on its ownership of multiple trademark registrations for the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”)); Capital One Financial Corp. v. MGA Enterprises Limited, FA1467312 (Nat. Arb. Forum December 10, 2012) (finding that Complainant has rights in the CAPITAL ONE trademark under Policy ¶4(a)(i) by reason of its registration of the mark with a national trademark authority-- the USPTO); Capital One Financial Corp. v. Above.com Domain Privacy, FA1463496 (Nat. Arb. Forum October 23, 2012) (finding that Complainant demonstrated its rights in the CAPITAL ONE mark under Policy ¶4(a)(i) by showing it registered such mark with the USPTO as well as other recognized trademark registries worldwide); and Capital One Financial Corp. v. Paydayloanz.com, FA1463493 (Nat. Arb. Forum October 22, 2012) (finding that Complainant secured rights in its CAPITAL ONE mark through its various global trademark registrations, pursuant to Policy ¶4(a) (i)).
Complainant, Capital One Financial Corp., is a major financial institution headquartered in McLean, Virginia. Capital One was founded in 1988 and helped pioneer the mass marketing of credit cards in the early 1990s. Complainant offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients. Complainant has consistently used the CAPITAL ONE mark to promote its goods and services since its inception.
Respondent’s disputed domain name <capitalonebank.org> is confusingly similar to Complainant’s CAPITAL ONE and CAPITAL ONE BANK trademarks, because Respondent’s domain name contains Complainant’s marks in their entireties. Moreover, the addition of the generic top-level domain “.com” also does not sufficiently distinguish the disputed domain name from Complainant’s mark because a top-level domain is a required element of all Internet domain names.); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Capital One Financial Corp. v. MGA Enterprises Limited, FA1467312 (Nat. Arb. Forum December 10, 2012) (finding that Respondent’s <capitalonecardservices.com> is confusingly similar to Complainant’s CAPITAL ONE trademark…and “the removal or addition of related generic terms, and addition of a top-level domain do not save the domain name from the realm of confusingly similarity”). UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
[b.] The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject to this Complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Complainant has never authorized Respondent to use its CAPITAL ONE or CAPITAL ONE BANK trademarks, much less use the mark as a domain name, and Respondent is not a licensee of Complainant. Such evidence is sufficient to establish a respondent’s lack of rights to the disputed domain 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).
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 noncommercial or fair use. Respondent’s disputed domain name <capitalonebank.org> displays a search engine, “related searches” and “sponsored listings.” Specifically, Respondent’s website provides links to other financial institutions, such as Visa, including some of Complainant’s competitors. One reaches these pages by simply typing in the name of one of Complainant’s competitors, or by clicking on any of the “related searches” links depicted on the page. Such actions are sufficient to establish that Respondent’s actions are not in connection with a bona fide offering of goods or services. See Expedia, Inc. v. Compaid, FA520654 (Nat. Arb. Forum August 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) nor a legitimate noncommercial use or fair use pursuant to Policy ¶4(c)(iii)).
[c.] The disputed domain name should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Respondent is using the disputed domain name to display sponsored links to third-party websites, some of which offer credit card and banking services that compete with those offered under Complainant’s marks. See Exhibit C. This use results in a disruption of Complainant’s business through the confusion caused by the similarity between Complainant’s CAPITAL ONE and CAPITAL ONE BANK marks and the disputed domain name. Respondent is benefiting from the valuable goodwill that Complainant has established in its marks and such actions are sufficient to establish the bad faith requirement. 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 products of the complainant and to complainant’s competitors, as well as diverting Internet users to several other domain names.)
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims rights in the CAPITAL ONE BANK trademark based on its registration of the mark with the United States Patent & Trademark Office (“USPTO”) (e.g. 3,419,972, registered Apr. 29, 2008). The registration of a mark with the USPTO is normally sufficient to confer rights in the mark under Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel finds Complainant has adequately established rights in the CAPITAL ONE BANK mark under Policy ¶4(a)(i).
Complainant claims the <capitalonebank.org> domain name is identical or confusingly similar to Complainant’s CAPITAL ONE BANK trademark under Policy ¶4(a)(i). gTLDs and spaces are irrelevant to a Policy ¶4(a)(i) analysis. Every domain name must contain a gTLD or a ccTLD as part of its syntax. No domain name may contain spaces because spaces are prohibited characters. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). To hold otherwise would be to eviscerate the UDRP. When these elements are removed, the disputed domain name duplicates Complainant’s mark in its entirety. The Panel finds the <capitalonebank.org> domain name is identical or confusingly similar to Complainant’s CAPITAL ONE BANK mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then burden shifts to Respondent to show it has 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 claims Respondent has not been commonly known by the disputed domain name and has therefore not demonstrated rights or legitimate interests in the disputed domain name under Policy ¶4(c)(ii). The WHOIS information now identifies “DCH” as the registrant of the disputed domain name. Complainant is not affiliated with Respondent and has not authorized Respondent to use the CAPITAL ONE BANK mark. The fact the WHOIS information is differs from the domain name and there is a lack of authorization from Complainant is strong evidence a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel finds Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests through Policy ¶4(c)(ii).
Complainant also claims Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii). The disputed domain name resolves to a search engine and links to finance-related sites which compete with Complainant’s business. Using a disputed domain name solely to display competing hyperlinks does not demonstrate a bona fide offering or a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel finds Respondent has not established rights or legitimate interests in the <capitalonebank.org> domain name under Policy ¶¶4(c)(i) or 4(c)(iii).
Finally, Respondent originally registered the domain name under a privacy service, which means a nominee holds bare legal title for an undisclosed beneficiary. This means the undisclosed beneficiary cannot, by definition, acquire any rights to the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent is disrupting Complainant’s business by using the disputed domain name to link to websites that compete with Complainant, demonstrating bad faith registration and use under Policy ¶4(b)(iii). This constitutes adequate proof of bad faith registration and use under Policy ¶4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”).
Complainant also claims Respondent is using the disputed domain name to take advantage of the goodwill Complainant has established in its mark by using a confusingly similar domain name to divert consumers who are searching for Complainant but mistakenly come to Respondent’s site instead. Such diversionary tactics with competitive links are sufficient to prove bad faith attraction for commercial gain under Policy ¶4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, the fact Respondent originally registered the domain name with a privacy service in a commercial context raises the rebuttable presumption of bad faith registration and use. Respondent has taken no steps to rebut this presumption. That fact alone sufficiently demonstrates bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <capitalonebank.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 9, 2013
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