Capital One Financial Corp. v. Mike Morgan
Claim Number: FA1409001579519
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Mike Morgan (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cap1.com>, 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2014; the National Arbitration Forum received payment on September 12, 2014.
On September 15, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <cap1.com> 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 September 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@cap1.com. Also on September 15, 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 October 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 is the owner of the CAPITAL ONE mark, which it uses in connection with banking and financial services. Complainant has registrations for the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,065,991 registered May 27, 1997). The <cap1.com> domain name is confusingly similar to the CAPITAL ONE mark as Respondent merely abbreviates Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the <cap1.com> domain name. The WHOIS record for the disputed domain name supports this claim, and Respondent is not authorized to use the CAPITAL ONE trademark. Respondent resolves the <cap1.com> domain name to a website hosting links to competing financial institutions such as Visa, American Express, and CitiBank.
The <cap1.com> domain name was registered and is being used in bad faith. Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to competing financial websites, resulting in a disruption of complainant’s business and creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <cap1.com> domain name. Respondent is commercially benefiting from the valuable goodwill that Complainant has established in its CAPITAL ONE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Capital One Financial Corp., is the owner of the CAPITAL ONE mark, which it uses in connection with banking and financial services. Complainant has registrations for the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,065,991 registered May 27, 1997).
Respondent, Mike Morgan, registered the <cap1.com> domain name on May 9, 2002. Respondent is using the disputed domain name to resolve to a website featuring links to competing financial institutions.
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 owns rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark registered in some jurisdiction).
Respondent’s <cap1.com> domain name is confusingly similar to the CAPITAL ONE mark under Policy ¶ 4(a)(i). Respondent registered the misspelling or typo that an Internet user would make when typing Complainant’s mark. Changing a word into a number and abbreviating a mark does not differentiate a disputed domain name. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see also J.P. Commc’ns, Inc. v Mainstream Adver., FA 1270452 (Nat. Arb. Forum July 11, 2009) (concluding that respondent’s substitution of the word “ten” in the complainant’s TOP TEN WHOLESALE mark for the numeral “10” in the <top10wholesale.com> domain name did not sufficiently distinguish respondent’s domain name from complainant’s mark due to their phonetic similarities). Additionally, Respondent also deletes spacing from the mark in the disputed domain name. Respondent’s deletion of spacing and addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. 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)).
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.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the <cap1.com> domain name under Policy ¶ 4(c)(ii). Respondent is not authorized to use the CAPITAL ONE trademark. The WHOIS record for the disputed domain name identifies “Mike Morgan” as the domain name registrant. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s <cap1.com> domain name resolves to a website featuring links to competing financial institutions such as Visa, Chase, CitiBank, and American Express. Respondent’s use of the <cap1.com> domain name 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The <cap1.com> domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iii). Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to competing financial websites, resulting in a disruption of Complainant’s business. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (bad faith registration and use pursuant to Policy ¶ 4(b)(iii) found where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent’s use of the <cap1.com> domain name to resolve to a website featuring links to competing financial institutions creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <cap1.com> domain name. Presumably, Respondent is commercially benefiting from the valuable goodwill that Complainant has established in its CAPITAL ONE mark. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (bad faith under Policy ¶ 4(b)(iv) found 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). Accordingly, the <cap1.com> domain name was registered and is used in bad faith under Policy ¶ 4(b)(iv).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cap1.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 24, 2014
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