Capital One Financial Corp. v. Zhichao Yang
Claim Number: FA1410001582809
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Zhichao Yang (“Respondent), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonebank360.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2014; the National Arbitration Forum received payment on October 1, 2014.
On October 2, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <capitalonebank360.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 October 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@capitalonebank360.com. Also on October 3, 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 30, 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
i) Complainant uses CAPITAL ONE 360 to promote its online banking and financial services. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,401,562 registered Sept. 10, 2013, filed Aug. 31, 2012). Respondent merely adds the generic top-level domain “.com” and the descriptive term “bank” to the mark in forming this confusingly similar domain name.
ii) Respondent has no rights or legitimate interests in this domain name. First, Respondent is not commonly known as this domain name and has not been authorized to use the CAPITAL ONE 360 mark in any manner. Further, Respondent uses the <capitalonebank360.com> domain name to promote a generic hyperlinks “related links” style website—some of which are competing bank organizations.
iii) Respondent registered and uses the <capitalonebank360.com> domain name in bad faith. Respondent is promoting links to competing banks on the <capitalonebank360.com> domain name’s website in a manner that disrupts the CAPITAL ONE 360 business. The use of the <capitalonebank360.com> domain name to promote advertisements shows Respondent’s intent to profit from a likelihood of confusion.
B. Respondent
Respondent did not submit a response. The Panel notes that the <capitalonebank360.com> domain name was registered on January 14, 2013.
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 argues that it uses CAPITAL ONE 360 to promote its online banking and financial services. Complainant submits the mark has been registered with the USPTO (e.g., Reg. No. 4,401,562 registered Sept. 10, 2013, filed Aug. 31, 2012). The Panel agrees that Complainant has rights in CAPITAL ONE 360 by way of its registration of the mark with the USPTO. See 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 Respondent merely adds the generic top-level domain (“gTLD”) “.com” and the descriptive term “bank” to the mark in forming this confusingly similar domain name. The Panel agrees that neither deleting the spacing in the mark nor adding the gTLD are relevant alterations to the mark. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). The Panel also agrees that interjecting the word “bank” into the CAPITAL ONE 360 mark does not make the domain name distinct from the mark, as there is a clear relationship between term “bank” and Complainant’s banking services under the CAPITAL ONE 360 mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Accordingly, the Panel finds Policy ¶ 4(a)(i) satisfied.
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 believes that Respondent is not commonly known as this domain name and has not been authorized to use the CAPITAL ONE 360 mark in any manner. The Panel notes how “Zhichao Yang” is the listed registrant of record for this <capitalonebank360.com> domain name. The Panel agrees that there is insufficient basis in the record to find Respondent to be commonly known by the domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further claims that Respondent uses the <capitalonebank360.com> domain name to promote a generic hyperlinks “related links” style website—some of which are competing bank organizations. The Panel notes how this domain name resolves to websites promoting “US Bank Rates” and other banking-related hyperlink advertisements. See Compl., at Attached Ex. C. The Panel agrees Respondent has made no Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, of the disputed domain name because competing links are not an allowable use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant also argues that Respondent is promoting links to competing banks on the <capitalonebank360.com> domain name’s website in a manner that disrupts the CAPITAL ONE 360 business. This Panel again notes the nature of the advertisements present in Exhibit C. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), a panel held that the presence of competing advertisements give rise to an inference of bad faith commercial disruption. Here the Panel similarly finds Policy ¶ 4(b)(iii) commercial disruption.
Complainant claims that the use of the <capitalonebank360.com> domain name to promote advertisements shows Respondent’s intent to profit from a likelihood of confusion. As the Panel believes the use of the domain name as seen in Exhibit C is evidence of capitalization on a likelihood of confusion by Respondent, this Panel finds Policy ¶ 4(b)(iv) bad faith here. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalonebank360.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 10, 2014
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