Capital One Financial Corp. v. Zhichao Yang
Claim Number: FA1409001579520
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capitalonecarrers.com>, <capitolcashloans.com>, <capitolonejourney.com>, and <captialonecareers.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.
Darryl C. Wilson, 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, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <capitalonecarrers.com>, <capitolcashloans.com>, <capitolonejourney.com>, and <captialonecareers.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 September 16, 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@capitalonecarrers.com, postmaster@capitolcashloans.com, postmaster@capitolonejourney.com, postmaster@captialonecareers.com. Also on September 16, 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 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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 names be transferred from Respondent to Complainant.
A. Complainant
a. Complainant’s mark:
i. Complainant owns the CAPITAL ONE mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626, registered August 13, 1996).
ii. Complaint uses the CAPITAL ONE mark in connection with its business as a major financial institution.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The <capitalonecarrers.com> and <capitalonecareers.com> domain names are confusingly similar to Complainant’s CAPITAL ONE mark, because Respondent has simply added the generic term “careers” to the mark and misspelled it.
2. The <capitolonejourney.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark, because it simply misspells “capital” and adds the generic term “journey” to the mark.
3. The <capitalcashloans.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark, because it simply removes the word “One” from the mark and adds two generic terms.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interest in the disputed domain names.
2. Respondent is not commonly known by the disputed domain names. Respondent is neither licensed nor authorized to use the CAPITAL ONE mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain names.
4. The disputed domain names all provide links to other financial institutions, including some of Complainant’s competitors.
5. Respondent’s behavior also constitutes typosquatting.
iii. Policy ¶ 4(a)(iii)
1. Respondent is using the disputed domain names to display links to other financial institutions, some of which are in direct competition with Complainant. Such behavior disrupts Complainant’s business.
2. Respondent’s typosquatting behavior is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Capital One Financial Corp. of Richmond VA, USA. Complainant owns numerous domestic and international registrations for the mark CAPITAL ONE and related marks comprising the family of CAPITAL ONE marks. Complainant has continuously used its marks since at least its 1996 USA registration in connection with the provision of a broad spectrum of banking and financial services.
Respondent is Zhichao Yang of China. Respondent’s registrar’s address is listed as Scottdale, AZ, USA. Respondent registered the <capitalonecareers.com> and <capitalonecarrers.com> domain names on or about January 1, 2013. Respondent registered the <capitolonejourney.com> domain name on or about February 14, 2012. Respondent registered the <capitolcashloans.com> domain name on or about December 6, 2013.
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 uses the CAPITAL ONE mark in connection with its business as a major financial institution. Complainant claims to own the CAPITAL ONE mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,992,626, registered August 13, 1996). Complainant argues that such registrations are sufficient to establish rights in the CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decisions. See e.g. Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel here finds that Complainant’s USPTO registrations are sufficient to satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <capitalonecareers.com> and <capitalonecarrers.com> domain names are confusingly similar to Complainant’s CAPITAL ONE mark because Respondent has simply added the generic term “careers” to the mark and misspelled it in one of the domains. The Panel notes that all of the disputed domain names differ from the CAPITAL ONE mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Prior panels have held that the addition of a generic term does not escape the realm of confusing similarity and that a simple misspelling of a protected mark is still confusingly similar. Additionally, panels have found that the affixation of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). The Panel here finds that <capitalonecareers.com> and <capitalonecarrers.com> are confusingly similar to Complainant’s mark.
Complainant claims that the <capitolonejourney.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark because Respondent has simply misspelled the word “capital” and added the generic term “journey” to the mark. Previous panels have found that a simple misspelling and addition of a generic term are not significant enough distinctions to escape confusing similarity. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain). The Panel here finds that the <capitolonejourney.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).
Finally, complainant argues that the <capitolcashloans.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark because Respondent has removed one word from the mark, misspelled the mark, and added two generic terms to the mark. Other panels have found that such changes still fall under the confusingly similar policy of Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark). The Panel here finds that Respondent’s disputed domain name is confusingly similar to Complainant’s CAPITAL ONE mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information identifies “Zichao Yang” as the registrant of the disputed domain names. Further, Complainant states that Respondent is neither licensed nor authorized to use the CAPITAL ONE mark. The Panel notes that Respondent has failed to submit any response to refute any of Complainant’s contentions. The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain names. Complainant asserts that the disputed domain names currently redirects Internet users to websites that contain a variety of different links, some of which are in direct competition with Complainant. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was used in such a way. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding 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 is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel here finds that the disputed domain names are not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant further contends that Respondent’s behavior constitutes typosquatting. The Panel finds that because of the addition of the generic terms to the mark in the disputed domain names, Respondent’s actions do not fit the traditional definition of typosquatting. Prior panels have found that a respondent has engaged in typosquatting where it has registered a disputed domain name with a common misspelling of a complainant’s mark. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent currently uses the disputed domain names to redirect Internet users to its own websites that contain a variety of different third-party links, some of which are in direct competition with Complainant. Previous panels have found evidence of bad faith in such actions. 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). The Panel here finds that Respondent’s current use of the disputed domain names is in a manner conforming to Policy ¶ 4(b)(iv) bad faith.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonecarrers.com>, <capitolcashloans.com>, <capitolonejourney.com>, and <captialonecareers.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 28, 2014
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