Capital One Financial Corp. v. CW INC
Claim Number: FA1310001527001
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is CW INC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonerewards.com>, registered with GODADDY.COM, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2013; the National Arbitration Forum received payment on October 29, 2013.
On October 30, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <capitalonerewards.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 October 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@capitalonerewards.com. Also on October 31, 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 November 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, 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 contends as follows:
Complainant is a major financial institution founded in 1988. Complainant helped pioneer the mass marketing of credit cards in the early 1990s. Complainant offers a variety of financial products and services to its customers including small businesses.
Complainant has consistently used the CAPITAL ONE mark to promote its goods and services since its inception. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CAPITAL ONE mark as well as registrations with numerous International registrars.
Respondent’s <capitalonerewards.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
Respondent adds the generic term “rewards” and the generic top-level domain “.com” to Complainant’s mark.
Respondent has no rights or legitimate interests in the <capitalonerewards.com> domain name. Respondent is not commonly known by the disputed domain name. Complainant has never authorized Respondent to use its CAPITAL ONE mark. Respondent is not a licensee of Complainant. Respondent has failed 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 resolves to a website providing links to other financial institutions, some of which compete with Complainant.
Respondent has registered and is using the <capitalonerewards.com> domain name in bad faith. Respondent uses the disputed domain name to divert Internet users seeking Complainant’s business, to a directory website, and a commercial search engine that displays third-party links to Complainant’s competitors. Respondent is creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent is benefiting from the valuable goodwill that Complainant has established in its mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns numerous trademark registrations with the USPTO and with International registrars for its CAPITAL ONE mark.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the CAPITAL ONE mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent is using the at-issue domain name to divert Internet users seeking Complainant’s business, to a directory website, and a commercial search engine that displays third-party links to 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."
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates 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. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
The at-issue domain is made up of Complainant’s entire mark without the space, adds the generic terms “rewards,” and appends the top-level domain name “.com” thereto. The resulting differences between the domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶4(a)(i). In fact, the addition of “rewards” to Complainant’s mark only serves to increase confusion between the domain name and the mark since the term suggests Complainant’s credit card business which may feature a rewards program. Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s CAPITAL ONE trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), (holding that the addition of descriptive or generic terms did not remove a disputed domain name from the realm of confusing similarity); See also. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), (finding that spaces and gTLDs are irrelevant to a Policy ¶ 4(a)(i) analysis.
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the <capitalonerewards.com> domain name as “CW INC.” Additionally, there is no evidence that tends to prove that, notwithstanding the WHOIS record, Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <capitalonerewards.com> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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 domain name resolves to a webpage providing links to other financial institutions, some of which may compete with Complainant including “American Express OPEN,” “Rocketmiles Official Site,” “Military Car Loans- $0 Down,” “Lowe’s Official Site,” “3 Bureau Report $12.95.” Respondent’s use of the domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate 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)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As mentioned above, the <capitalonerewards.com> domain name addresses a website where Respondent displays a variety of links to Complainant’s competitors. Using the domain name in this manner is disruptive to Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to 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).
Furthermore, since the domain name addresses a website offering links to Complainant’s competitors and since it appears that Respondent intends to profit from the good faith associated with Complainant’s mark, the relevant circumstances indicate that Respondent is attempting to attract, for commercial gain, Internet users to the <capitalonerewards.com> website by creating a likelihood of confusion between Complainant’s CAPITAL ONE mark and the at-issue domain name. Therefore, the Panel concludes pursuant to Policy ¶ 4(b)(iv) that Respondent has registered and used the <capitalonerewards.com> domain name in bad faith. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(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 <capitalonerewards.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 25, 2013
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