Capital One Financial Corp. v. PORTMEDIA DOMAINS / PORTMEDIA HOLDINGS LTD
Claim Number: FA1410001586092
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is PORTMEDIA DOMAINS / PORTMEDIA HOLDINGS LTD (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneplatinum.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2014; the National Arbitration Forum received payment on October 21, 2014.
On October 22, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <capitaloneplatinum.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 October 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@capitaloneplatinum.com. Also on October 23, 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 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
On November 19, 2014, Respondent submitted an untimely Response to the National Arbitration Forum.
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 contends as follows:
Complainant uses the CAPITAL ONE mark in connection with a broad spectrum of financial products and services for consumers, small businesses and commercial clients. Complainant owns the CAPITAL ONE mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,065,991 registered May 27, 1997).
The <capitaloneplatinum.com> domain name is confusingly similar to the CAPITAL ONE mark as the name contains the mark in its entirety, and adds the term “platinum,” which directly relates to Complainant’s credit card business.
Respondent lacks rights in the disputed domain name. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. Further, Complainant shares no affiliation with Respondent. Respondent’s lack of rights in the disputed domain name is further evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The disputed domain name resolves to a website displaying a search engine with “related links.” The website serves as a directory to provide links to other financial institutions in competition with Complainant including MasterCard, Visa, and Bank of America.
Respondent has engaged in bad faith registration and use. Respondent uses the disputed domain name to divert users seeking Complainant’s website to a directory website and commercial search engine that promotes third-party links, some of which are competitors of Complainant. The promotion of competing hyperlinks indicates Policy ¶ 4(b)(iii) bad faith. As Respondent is generating click-through revenue through the promote links, Respondent is also in violation of Policy ¶ 4(b)(iv).
B. Respondent
Respondent filed its Response subsequent to the filing deadline. Nevertheless, the Panel, in its discretion, considers the Response in its decision. Therein, Respondent, through its counsel, unequivocally consents to transfer the <capitaloneplatinum.com> domain name to Complainant.
Complainant has trademark rights in the CAPITAL ONE mark.
Respondent registered the at-issue domain name after Complainant acquired rights in CAPITAL ONE.
Respondent consents to have the at-issue domain name transferred to Complainant.
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.”).
Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”) Here, since there is a clear indication that Respondent agrees to transfer the at-issue domain name to Complainant, the Panel follows its rational set out in Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Shirlee Cornejo / Universal Export Import Ltd. FA1471116 (Nat. Arb. Forum January 2, 2013), American Petroleum Institute v. Lynn Matthews, FA1507800 (Nat. Arb. Forum, July 30, 2013), Microsoft Corporation v. Simon Ward / Game Codes Ltd., FA1534229 (Nat. Arb. Forum, January 16, 2014), Capital One Financial Corp. v Matthew Krei FA1569979 (Nat. Arb. Forum, July 30, 2014), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases cited above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. In the instant case, Complainant establishes its rights in the CAPITAL ONE mark through its USPTO trademark registration of such mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, Respondent’s <capitaloneplatinum.com> domain name is fashioned by adding the term “platinum” –a term suggesting Complainant’s credit card business- to Complainant’s CAPITAL ONE trademark less its space and then appending the generic top-level domain, “.com,” to the resulting string. These changes are insufficient to materially distinguish the domain name from Complainant’s CAPITAL ONE trademark. Therefore, the Panel finds that Respondent’s <capitaloneplatinum.com>domain name is confusingly similar to Complainant’s CAPITAL ONE trademark under Policy ¶4(a)(i). See Google Inc. v. serap ozk, FA 1562193 (Nat. Arb. Forum July 14, 2014) (finding that adding terms, removing the space in the GOOGLE GLASS mark and adding a gTLD does not add any distinction to a disputed domain name to avoid confusing similarity).
In light of the foregoing, Respondent’s consent-to-transfer the at-issue domain name to Complainant compels the Panel to order that the <capitaloneplatinum.com> domain name be transferred as requested. Furthermore, the Panel finds no basis for including substantive analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in its decision.
Having determined that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and having established that Respondent has consented to the relief Complainant requests, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneplatinum.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 20, 2014
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