Capital One Financial Corp. v. Abraham / Ooramy
Claim Number: FA1401001540675
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Abraham / Ooramy (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <customercarecapitalonebank.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho-Hyun Nahm, Esq. 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 25, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <customercarecapitalonebank.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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@customercarecapitalonebank.org. 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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 makes the following allegations:
i. Complainant owns the CAPITAL ONE BANK mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,419,972, registered April 29, 2008).
ii. Complainant also owns the CAPITAL ONE mark through registrations with trademark agencies in more than fifteen countries, including India’s Office of the Controller-General of Patents, Designs and Trademarks (e.g., App. No. 1,273,216, applied March 17, 2004).
iii. Complainant is a major financial institution offering a broad spectrum of financial products and services to consumers, small business, and commercial clients.
iv. Complainant has used the CAPITAL ONE and CAPITAL ONE BANK marks to promote its products and services since its inception in 1988.
i. Policy ¶ 4(a)(i)
1. The <customercarecapitalonebank.org> domain name is confusingly similar to Complainant’s CAPITAL ONE BANK mark as the domain name merely adds the terms “customer” and “care,” and the generic top-level domain (“gTLD”) “.org.” The fact that the terms “customer” and “care” relate to Complainant’s business serves to increase confusion between the domain name and the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. See Exhibit B. Complainant has not authorized Respondent’s use of the CAPITAL ONE BANK mark.
2. 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.
3. Respondent’s <customercarecapitalonebank.org> domain name resolves to a parked webpage featuring advertisements, a commercial search engine, and sponsored links to third-party websites, some of which compete with Complainant. See Exhibit C.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s bad faith is demonstrated by Respondent’s use of the disputed domain name to present a parked webpage featuring advertisements, a commercial search engine, and a sponsored links to third-party websites, some of which are owned by Complainant’s competitors. Complainant argues that such use supports a finding of bad faith disruption against Respondent.
2. Respondent is creating a likelihood of confusion as to the source of Respondent’s website, and is commercially benefiting from the goodwill that Complainant has established in its mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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.”).
Complainant is a major financial institution offering a broad spectrum of financial products and services to consumers, small business, and commercial clients. Complainant claims to own the CAPITAL ONE BANK mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,419,972, registered April 29, 2008). The Panel finds that Complainant’s trademark registrations for the CAPITAL ONE BANK mark with the USPTO establish Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i), despite the fact that Respondent does not reside or operate in the United States. See Capital One Fin. Corp. v. DCH, FA 1487535 (Nat. Arb. Forum April 9, 2013) (finding that Complainant’s USPTO registrations of the CAPITAL ONE BANK were adequate to establish rights in the mark under Policy ¶ 4(a)(i); see also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <customercarecapitalonebank.org> domain name is confusingly similar to Complainant’s CAPITAL ONE BANK mark as the domain name merely adds the terms “customer” and “care,”, and the gTLD “.org.” Complainant urges that the terms “customer” and “care” relate to Complainant’s business and therefore serve to increase confusion between the domain name and the mark. Though Complainant does not note expressly, the disputed domain name also differs from the mark in that the spaces between the words in the mark were eliminated. In arguing that these alterations are insufficient to negate the confusing similarity, Complainant cites Capital One Fin. Corp. v. Above.com Domain Privacy, FA 1463496 (Nat. Arb. Forum October 23, 2012) (finding that “Respondent merely adds the descriptive term “card,” the generic term “now,” and the top level domain name, “.com” to Complainant’s mark and deletes the space between words in the mark. The resulting inconsistencies between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i).”). In line with precedent, the Panel finds that the <customercarecapitalonebank.org> domain name is confusingly similar to Complainant’s CAPITAL ONE BANK mark pursuant to Policy ¶ 4(a)(i), because the additions of the terms “customer” and “care,” the addition of the gTLD “.org,” and the elimination of spaces between words in the mark are insufficient to differentiate the resulting <customercarecapitalonebank.org> domain name from the incorporated CAPITAL ONE BANK mark.
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.”).
It is Complainant’s position that Respondent does not have rights or legitimate interests in the <customercarecapitalonebank.org> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. See Exhibit B, which indicates that “Abraham / Ooramy” is the registrant of the domain name. Further, Complainant asserts that it has not authorized Respondent’s use of the CAPITAL ONE BANK mark. Respondent has not submitted a response in this proceeding, and therefore, has not refuted any of Complainant’s contentions in this matter. Where the available evidence in the record, including the WHOIS information, does not imply that the respondent is commonly known by the disputed domain name, previous panels have held that the respondent is not commonly known by the domain name for the purposes of the Policy ¶ 4(c)(ii) analysis. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Accordingly, the Panel concludes that Respondent is not commonly known by the <customercarecapitalonebank.org> domain name within the meaning of Policy ¶ 4(c)(ii).
Complainant also argues that 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. Complainant asserts that Respondent’s <customercarecapitalonebank.org> domain name resolves to a parked webpage featuring advertisements, a commercial search engine, and sponsored links to third-party websites, some of which compete with Complainant. See Exhibit C for a screenshot of the dispute page. Previous panels have refused to find that the respondent has rights or legitimate interests in similar circumstances. For example, in H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel reasoned that because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent was not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Therefore, the Panel at present finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii), respectively.
Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s use of the disputed domain name to present a parked webpage featuring advertisements, a commercial search engine, and a sponsored links to third-party websites, some of which are owned by Complainant’s competitors. Complainant argues that such use supports a finding of bad faith disruption against Respondent. To support this contention, Complainant has submitted a screenshot of the page resolving from the <customercarecapitalonebank.org> domain name in Exhibit C. The Panel notes that the screenshot displays a search bar, links to Complainant’s websites, and links to third-party websites including <www.gethuman.com>, <www.ask.com>, and <www.bandb.com>. The Panel further notes that the description for the <www.gethuman.com> link indicates that the site deals with customer service issues, and that the <www.danb.com> link offers business credit reports. Under similar circumstances, previous panels have found evidence of bad faith disruption. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found 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. As the panel agrees that these links disrupt Complainant’s efforts in the financial industry, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent is creating a likelihood of confusion as to the source of Respondent’s website, and is commercially benefiting from the goodwill that Complainant has established in its mark. Complainant contends that such efforts further demonstrate Respondent’s bad faith registration and use of the disputed domain name. The Panel recalls that Complainant’s Exhibit C reveals that the disputed domain name resolves to a page that displays a search bar, links to Complainant’s websites, and links to third-party websites, including pages pertaining to customer and business credit reporting services. The Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv), as the disputed domain will confuse Internet users as to the source, sponsorship, or endorsement of the promoted links and Respondent is likely commercially benefiting from the confusion. 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)(iv) 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <customercarecapitalonebank.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 11, 2014
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