Capital One Financial Corp. v. Denesh Kara / Study4Less
Claim Number: FA1402001544062
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Denesh Kara / Study4Less (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonebanking.net>, registered with eNom, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2014; the National Arbitration Forum received payment on February 18, 2014.
On February 18, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <capitalonebanking.net> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 February 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@capitalonebanking.net. Also on February 19, 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 March 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
1. Policy ¶ 4(a)(i)
a. Complainant is a major American financial institution offering a broad spectrum of financial products and services to consumers, small businesses, and commercial clients.
b. Complainant has registered the CAPITAL ONE (e.g., Reg. No. 1,992,626 registered August 13, 1996) and CAPITAL ONE BANK (e.g., Reg. No. 3,419,972 registered April 29, 2008) marks with the United States Patent and Trademark Office (“USPTO”), among other agencies.
c. The <capitalonebanking.net> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
i. The additions of the generic term “banking” and the generic top-level domain (“gTLD”) “.net” to Respondent’s domain name are insufficient to distinguish the disputed domain name from Complainant’s mark.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name.
i. The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name.
ii. Complainant has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant.
b. 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.
i. Respondent’s website displays text about Complainant and Complainant’s services, meant to create the impression that Respondent is affiliated with Complainant. The website also provides links purportedly about or to Complainant’s different services, but clicking on these links only resolves to more of Respondent’s webpages containing additional text about Complainant. The only link that resolves to a webpage external to Respondent is a large advertisement link that changes each time the page is loaded. See Exhibit C.
3. Policy ¶ 4(a)(iii)
a. Respondent is using the disputed domain name to create the appearance of affiliation with Complainant and provide click-through links to both Complainant and third party websites. See Exhibit C. This use results in a disruption of Complainant’s business through the confusion caused by the similarity between Complainant’s marks and the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a major American financial institution offering a broad spectrum of financial products and services to consumers, small businesses, and commercial clients.
2. Complainant has registered the CAPITAL ONE (e.g., Reg. No. 1,992,626 registered August 13, 1996) and CAPITAL ONE BANK (e.g., Reg. No. 3,419,972 registered April 29, 2008) marks with the United States Patent and Trademark Office (“USPTO”), among other agencies.
3. Respondent registered <capitalonebanking.net> on December 19, 2007.
4. Respondent is using the disputed domain name and its website to create the appearance of affiliation with Complainant and provide click-through links to both Complainant and 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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it is a major American financial institution offering a broad spectrum of financial products and services to consumers, small businesses, and commercial clients. Complainant provides evidence of its registration of the CAPITAL ONE (e.g., Reg. No. 1,992,626 registered August 13, 1996) and CAPITAL ONE BANK (e.g., Reg. No. 3,419,972 registered April 29, 2008) marks with the USPTO, among other agencies, for use in connection with the financial services Complainant provides. The Panel determines that Complainant’s USPTO registrations establish Complainant’s rights in the CAPITAL ONE and CAPITAL ONE BANK marks under Policy ¶ 4(a)(i), regardless of Respondent’s apparent residency outside of the United States. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CAPITAL ONE mark. Complainant asserts that Respondent’s <capitalonebanking.net> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. In support of this, Complainant argues that the additions of the generic term “banking” and the gTLD “.net” to Respondent’s domain name are insufficient to distinguish the disputed domain name from Complainant’s mark. Previous panels have agreed with Complainant’s reasoning. See, e.g., Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel notes that Respondent’s domain name also removes the space between words in Complainant’s mark. The Panel finds, however, that this alteration is of little meaning for the purposes of Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore concludes that Respondent’s <capitalonebanking.net> domain name is confusingly similar to Complainant’s CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s CAPITAL ONE trademark and to use it in its domain name, adding only the generic word “banking”;
(b) Respondent is using the disputed domain name and its website to create the appearance of affiliation with Complainant and provide click-through links to both Complainant and third party websites;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant contends that Respondent is not commonly known by the
disputed domain name. Complainant maintains that it has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, adding that Respondent is not a licensee of Complainant. Complainant urges that the WHOIS information for the disputed domain name also does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS record lists Respondent as “Denesh Kara / Study4Less.” Without the benefit a response to refute these claims, the Panel determines that Respondent is not commonly known by the <capitalonebanking.net> domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
(e)Complainant next submits 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 describes Respondent’s website as displaying text about Complainant and Complainant’s services, meant to create the impression that Respondent is affiliated with Complainant. See Exhibit C. Complainant notes that the website also provides links purportedly about or to Complainant’s different services, but clicking on these links only resolves to more of Respondent’s webpages containing additional text about Complainant. Id. According to Complainant, the only link that resolves to a webpage external to Respondent’s own site is a large advertisement link that changes each time the page is loaded. The Panel determines that Respondent’s appropriation of Complainant’s mark in the <capitalonebanking.net> domain name for the purpose of drawing consumers to Respondent’s own website constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent registered and uses <capitalonebanking.net> in bad faith according to Policy ¶ 4(b)(iii). Complainant asserts that Respondent is using the disputed domain name to create the appearance of affiliation with Complainant and to provide click-through links to both Complainant and third-party websites. See Exhibit C. According to Complainant, this use results in a disruption of Complainant’s business through the confusion caused by the similarity between Complainant’s marks and the disputed domain name. Past panels have found bad faith disruption where the respondent’s use of a disputed domain name competes with the complainant’s business under its marks. See, e.g., Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). As the Panel determines that Respondent’s website provides links to Complainant’s competitors in the financial services industry, the Panel finds that Respondent registered and uses the <capitalonebanking.net> in bad faith according to Policy ¶ 4(b)(iii).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CAPITAL ONE mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonebanking.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 18, 2014
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