Capital One Financial Corp. v. Zhichao Yang / Zhichao Yang
Claim Number: FA1410001583406
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia. Respondent is Zhichao Yang / Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capitalone300.com>, <capitalonecarservice.com>, <capitolonecardservices.com>, <captialonecardservices.com>, and <securecapitalone360.com>, registered with eName Technology Co., Ltd.
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 6, 2014; the National Arbitration Forum received payment on October 6, 2014. The Complaint and other documentation were sent in Chinese when required.
On October 8, 2014, Ename Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <capitalone300.com>, <capitalonecarservice.com>, <capitolonecardservices.com>, <captialonecardservices.com>, and <securecapitalone360.com> domain names are registered with Ename Technology Co., Ltd. and that Respondent is the current registrant of the names. Ename Technology Co., Ltd. has verified that Respondent is bound by the Ename Technology Co., Ltd. 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 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@capitalone300.com, postmaster@capitalonecarservice.com, postmaster@capitolonecardservices.com, postmaster@captialonecardservices.com, and postmaster@securecapitalone360.com. Also on October 10, 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 November 7, 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 uses the CAPITAL ONE mark to promote its banking services. The CAPITAL ONE mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,442,400, registered June 3, 2008). The <capitalone300.com>, <capitalonecarservice.com>, <capitolonecardservices.com>, <captialonecardservices.com>, and <securecapitalone360.com> domain names tag on descriptive and CAPITAL ONE-related terms to the mark in forming the domain names.
Respondent has no rights or interests in the domain name. First, Respondent is not known by any of these domain names. Further, all of the domain names are used to host “related links” pages wrought with hyperlink advertising. Likewise, Respondent is capitalizing on common misspellings of Complainant’s mark in an act of typosquatting.
Respondent registered and used the domain name in bad faith. Respondent is disrupting Complainant’s business by allowing competing links to appear on each of the disputed domain names’ resolving websites. The typosquatting behavior of Respondent ought also to be considered in weighing bad faith.
B. Respondent
Respondent did not submit a response. The Panel notes that the earliest date on which one of the disputed domain names was registered was January 27, 2013.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 the CAPITAL ONE mark to promote its banking services. Complainant also notes how the CAPITAL ONE mark is registered with the USPTO (e.g., Reg. No. 3,442,400, registered June 3, 2008). This Panel finds this trademark registration to count as sufficient evidence of Policy ¶ 4(a)(i) rights in the mark. 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 claims the <capitalone300.com>, <capitalonecarservice.com>, <capitolonecardservices.com>, <captialonecardservices.com>, and <securecapitalone360.com> domain names tag on descriptive and CAPITAL ONE-related terms to the mark in forming the domain names. The Panel initially agrees that removing the mark’s spacing and adding the generic top-level domain (“gTLD”) “.com” is irrelevant. 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 further agrees that related terms such as “card,” “services,” “secure,” and “360” are descriptive when used in connection with the CAPITAL ONE mark, and as such enhance confusing similarity. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel agrees that the indiscriminate inclusion of the number “300” does not breach through the confusion as Complainant is merely adding superfluous characters to Complainant’s mark. See Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel finds that Respondent’s domain names are all confusingly similar to the CAPITAL ONE 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); 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 argues that Respondent is not known by any of these domain names. The Panel notes that “Zhichao Yang / Zhichao Yang” is listed as the registrant of record for the disputed domain names. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that when the WHOIS information provides no association with the respondent, and there was other evidence from respondent, there should be no finding under Policy ¶ 4(c)(ii). This Panel agrees in this analysis in finding Respondent is not known by the domain name under Policy ¶ 4(c)(ii).
Complainant claims that all of the domain names are used to host “related links” pages wrought with hyperlink advertising. This Panel observes how the disputed domain names appear to resolve to websites that promote an array of credit card-related services. See Compl., at Attached Ex. C. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), that panel held that the use of a domain name to host competing hyperlinks was not a bona fide offering of goods or services. This Panel agrees that using all five of the disputed domain names for hyperlink websites is neither a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii).
Complainant argues that the domain names are examples of typosquatting. However, the Panel finds that as the domain names encompass entirely new terms—not merely misspellings of Complainant’s marks—the domain names fall outside the scope of “typosquatting.”
Complainant argues that Respondent is disrupting Complainant’s business by allowing competing links to appear on each of the disputed domain names’ resolving websites. The Panel again notes how credit card advertisements appear on these disputed domain names’ websites. See Compl., at Attached Ex. C. This Panel agrees that competing ads such as “Chase Credit Card,” or “Visa Credit Card” are evidence of an intent to disrupt Complainant’s business by promoting a competitors—Policy ¶ 4(b)(iii) bad faith use and registration. See 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)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalone300.com>, <capitalonecarservice.com>, <capitolonecardservices.com>, <captialonecardservices.com>, and <securecapitalone360.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 17, 2014
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