Capital One Financial Corp. v. Kivo Boopi
Claim Number: FA1501001598658
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia. Respondent is Kivo Boopi (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneautoloanbadcredit.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2015; the National Arbitration Forum received payment on January 7, 2015.
On January 8, 2015, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <capitaloneautoloanbadcredit.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 January 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2015 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@capitaloneautoloanbadcredit.com. Also on January 9, 2015, 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 February 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Complainant
Complainant owns the CAPITAL ONE mark in numerous versions through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,442,400, registered June 3, 2008). Complainant offers financial products and services to consumers, small businesses, and commercial clients and uses the CAPITAL ONE mark to promote its goods and services. The <capitaloneautoloanbadcredit.com> domain name is confusingly similar to the CAPITAL ONE mark. The domain name contains Complainant’s mark in its entirety and simply adds the descriptive words “auto loan” and “bad credit.” Respondent also adds a generic top-level domain “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant has never authorized Respondent to use the CAPITAL ONE trademark. Respondent’s lack of rights or legitimate interests in the <capitaloneautoloanbadcredit.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name diverts Internet users who are seeking Complainant’s website to Respondent’s website <capitaloneautoloanbadcredit.com>.
Respondent has engaged in bad faith registration and use of the <capitaloneautoloanbadcredit.com> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Respondent’s actions qualify as bad faith registration under Policy ¶4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 the CAPITAL ONE mark in numerous versions through the USPTO (e.g., Reg. No. 3,442,400, registered June 3, 2008). Complainant offers financial products and services to consumers, small businesses, and commercial clients and uses the CAPITAL ONE mark to promote its goods and services. The Panel concludes Complainant’s valid registration of the CAPITAL ONE mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant asserts the <capitaloneautoloanbadcredit.com> domain name is confusingly similar to the CAPITAL ONE mark. The domain name contains Complainant’s mark in its entirety and simply adds the descriptive terms “auto loan” and “bad credit.” Respondent also adds a generic top-level domain “.com” to the domain name. Past panels have found that simply adding descriptive words to an otherwise incorporated mark does nothing to distinguish the disputed domain name from the complainant’s registered trademark, particularly when the terms allude to the Complainant’s business. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Further, an addition of a gTLD does not serve to adequately distinguish the disputed domain name from the registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 has no rights or legitimate interests in the disputed domain name. Specifically, Complainant claims that Respondent is not commonly known by the disputed domain name, as the WHOIS for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The WHOIS record lists “Kivo Boopi” as the registrant of record. Complainant has never authorized Respondent to use the CAPITAL ONE trademark. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the <capitaloneautoloanbadcredit.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant demonstrates that Respondent’s disputed domain name diverts Internet users who are seeking Complainant’s website to Respondent’s website <capitaloneautoloanbadcredit.com>. Specifically, Complainant alleges that Respondent’s website offers financial products to Internet users, presumably for monetary gain. Such actions sufficiently establish that Respondent’s website is not operated in connection with a bona fide offering of goods or services. See Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”). Absent a bona fide offering of goods or services, the Panel finds that Respondent has no rights or legitimate interest in respect of the domain name in dispute under Policy ¶4 (c)(i). Further, the Panel agrees that as Respondent’s offerings are presumably for financial gain, there can logically be no “noncommercial or fair use” under Policy ¶ (c)(iii).
Complainant has proven this element.
Complainant argues that Respondent has engaged in bad faith registration and use of the <capitaloneautoloanbadcredit.com> domain name. Complainant alleges that Internet users seeking its website are diverted to Respondent’s website which offers competing financial services. Complainant asserts that these actions disrupt Complainant’s business and constitute bad faith registration. See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”). Therefore, the Panel finds bad faith registration under Policy ¶ 4(b)(iii).
Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The disputed domain name resolves to a website that offers competing financial services. Complainant contends that Respondent is benefiting from the valuable goodwill that Complainant has established in its mark, and such actions are sufficient to establish the bad faith requirement under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel agrees that Respondent’s use demonstrates that Respondent here seeks commercial gain through a likelihood of confusion with Complainant’s mark and offerings of similar services, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).
Complainant has proven this element.
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 <capitaloneautoloanbadcredit.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 10, 2015
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