Capital One Financial Corp. v. Alex Snowden
Claim Number: FA1401001540653
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Alex Snowden (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonebonus.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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2014; the National Arbitration Forum received payment on January 24, 2014.
On January 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <capitalonebonus.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 January 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2014 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@capitalonebonus.com. Also on January 28, 2014, 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.
A timely Response was received and determined to be complete on February 17, 2014.
On February 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant is a major financial institution, offering a broad spectrum of financial products and services. Complainant has been in business since 1988.
b) Complainant has rights in the CAPITAL ONE mark, used in connection with financial products and services. Complainant owns registrations for the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626 registered August 13, 1996).
c) Respondent’s <capitalonebonus.com> is confusingly similar to Complainant’s CAPITAL ONE mark. The disputed domain name includes Complainant’s mark in its entirety while adding the generic term “bonus” and the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <capitalonebonus.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its CAPITAL ONE mark in any way.
b. The <capitalonebonus.com> domain name resolves to a website that mimics the look and feel of Complainant’s website, using several of Complainant’s registered trademarks and trade dress as well as offering click-through links to Complainant’s own legitimate website. See Complainant’s Exhibit C.
e) Respondent registered and is using the <capitalonebonus.com> domain name in bad faith.
a. Respondent is disrupting Complaint’s business by diverting Internet users to its <capitalonebonus.com> domain name, which mimics the look and feel of Complainant’s website and provides links to Complainant’s own website. See Complainant’s Exhibit C. Complainant believes Respondent is receiving click-through revenue from these links.
b. Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s CAPITAL ONE mark through the use of click-through links that link to Complainant’s legitimate website. See Complainant’s Exhibit C. Complainant believes Respondent is receiving click-through revenue from these links.
c. Respondent is attempting to pass itself off as Complainant because the <capitalonebonus.com> domain name resolves to a website that mimics the look and feel of Complainant’s website.
B. Respondent
Respondent agrees to transfer the <capitalonebonus.com> domain name without any argument.
a) Complainant has rights in the CAPITAL ONE mark, used in connection with financial products and services. Complainant owns registrations for the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626 registered August 13, 1996).
b) Respondent registered the <capitalonebonus.com> disputed domain name on August 8, 2013.
Respondent consents to transfer the <capitalonebonus.com> domain name to Complainant. However, Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel understands that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel will analyze the merits of the case under the elements of the UDRP.
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.
Complainant contends it has rights in the CAPITAL ONE mark, used in connection with financial products and services. Complainant states that it owns registrations for the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 1,992,626 registered August 13, 1996). The Panel finds that Complainant has rights in the CAPITAL ONE mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s domain name <capitalonebonus.com> is confusingly similar to Complainant’s CAPITAL ONE mark. Complainant notes that the disputed domain name includes Complainant’s mark in its entirety while adding the generic term “bonus” and the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Furthermore, the Panel finds that the addition of a generic term related to Complainant’s business activities is likely to increase the likelihood of confusion. Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Therefore, the Panel finds that Respondent’s <capitalonebonus.com> is confusingly similar to Complainant’s CAPITAL ONE mark within the meaning of Policy ¶ 4(a)(i).
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. 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 does not have any rights or legitimate interests in the <capitalonebonus.com> disputed domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its CAPITAL ONE mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Alex Snowden” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See 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). Therefore, because Respondent was not authorized by Complainant to use the CAPITAL ONE mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <capitalonebonus.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that the <capitalonebonus.com> domain name resolves to a website that mimics the look and feel of Complainant’s website, using several of Complainant’s registered trademarks and trade dress as well as offering click-through links to Complainant’s own legitimate website. See Complainant’s Exhibit C. In H-D v. Private Whois Service, FA 1328876 (Nat. Arb. Forum July 12, 2010), the panel found that use of the complainant’s Harley Davidson logo, mark, and a similar color scheme to the one used by the complainant was sufficient to find that the respondent was attempting to pass itself off as the complainant. Further, past panels have found that a respondent attempting to pass itself off as a complainant is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Therefore, the Panel finds that Respondent is attempting to pass itself off as Complainant, based on sufficient evidence of Respondent’s use of Complainant’s logo, mark, and color scheme on the website connected to the <capitalonebonus.com> domain name. Thus, the Panel holds that Respondent is not making 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).
Complainant asserts that Respondent registered and is using the <capitalonebonus.com> domain name in bad faith. Complainant argues that Respondent is disrupting Complaint’s business by diverting Internet users to its <capitalonebonus.com> domain name, which mimics the look and feel of Complainant’s website and provides links to Complainant’s own website. See Complainant’s Exhibit C. Complainant believes Respondent is receiving click-through revenue from these links. The Panel notes that past panels have interpreted the term “competing” broadly. See Schering Corp. v. NGS Enters., Ltd, FA 198013 (Nat. Arb. Forum Nov. 7, 2003) (“The Panel declines to adopt a narrow interpretation of the term ‘competing,’ as urged by Respondent . . . The Panel agrees with Complainant that at least some confusion and/or diversion of consumers is likely here, even though Complainant's and Respondent's tablets address different medical issues.”). Past panels have found that using a disputed domain name to sell a complainant’s products constitutes a bad faith disruption under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). The Panel believes that Respondent’s promotion of Complainant’s products may somehow disrupt Complainant’s business, and, therefore, the Panel finds that Respondent registered and is using the <capitalonebonus.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the disputed domain name mimics the look and feel of Complainant’s website and provides links to Complainant’s own website.
Complainant contends Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s CAPITAL ONE mark through the use of click-through links that link to Complainant’s legitimate website. See Complainant’s Exhibit C. Complainant believes Respondent is receiving click-through revenue from these links. In previous cases, panels have found that using a confusingly similar domain name to divert Internet users for a respondent’s own profit demonstrates bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Therefore, the Panel finds that Respondent registered and is using the <capitalonebonus.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using a confusingly similar domain name to obtain click-through revenue for Respondent’s own profit.
Complainant claims Respondent is attempting to pass itself off as Complainant because the <capitalonebonus.com> domain name resolves to a website that mimics the look and feel of Complainant’s website. See Complainant’s Exhibit C. In H-D v. Private Whois Service, FA 1328876 (Nat. Arb. Forum July 12, 2010), the panel found that use of the complainant’s Harley Davidson logo, mark, and a similar color scheme to the one used by the complainant was sufficient to find that the respondent was attempting to pass itself off as the complainant. Further, past panels have found that passing off is evidence of a respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). The Panel finds that Respondent is attempting to pass itself off as Complainant based on sufficient evidence of Respondent’s use of Complainant’s logo, mark, and color scheme on the website connected to the <capitalonebonus.com> domain name, and, therefore, the Panel holds that this finding provides further evidence of Respondent’s bad faith registration and use under 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 <capitalonebonus.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: March 06, 2014
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