Capital One Financial Corp. v. CAPO OFFSHORE / capitaloneoffshore
Claim Number: FA1501001599896
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia. Respondent is CAPO OFFSHORE / capitaloneoffshore (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneoffshore.com>, registered with Melbourne IT 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2015; the National Arbitration Forum received payment on January 15, 2015.
On Jan 15, 2015, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <capitaloneoffshore.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the names. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT 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 January 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 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@capitaloneoffshore.com. Also on January 16, 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 12, 2015 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns the CAPITAL ONE mark in a variety of 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 in connection with its goods and services. The <capitaloneoffshore.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 generic term “offshore” and adds the generic top-level domain “.com” to the domain name.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Although the WHOIS record indicates Respondent is known as “CAPO OFFSHORE / capitaloneoffshore,” there is no evidence to prove that such an organization exists. Complainant’s search through the California State Corporation Commission database does not reveal record of a company or corporation containing the Registrant organization name and address. Further, Complainant has never authorized Respondent to use the CAPITAL ONE trademark. Respondent’s lack of rights or legitimate interest in the <capitaloneoffshore.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 website redirects Internet users to the official Capital One website, <capitalone.com>.
3. Respondent has engaged in bad faith registration and use of the <capitaloneoffshore.com> domain name. Respondent’s website diverts Internet customers to Complainant’s own website, which results in disruption of Complainant’s business through a deliberate attempt to confuse customers as to the nature of the website. Respondent is presumably benefitting from the valuable goodwill that Complainant has established in its trademark, and such actions sufficiently establish bad faith registration under Policy ¶ 4(a)(iii).
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 listed as CAPO OFFSHORE/capitaloneoffshore, of Sunnyvale, CA, USA. Respondent’s registrar’s address is listed as Melbourne, Australia. The Panel notes that the <capitaloneoffshore.com> domain name was registered on or about July 2, 2014.
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 a variety of 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 in connection with its goods and services. The Panel finds that 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends the <capitaloneoffshore.com> domain name is confusingly similar to the CAPITAL ONE mark. The domain name contains Complainant’s mark in its entirety and simply inserts the generic term “offshore” and adds the generic top-level domain “.com” to the domain name. Prior panels have found that adding generic terms to an otherwise incorporated mark does not distinguish the disputed domain name from the complainant’s registered trademark. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Further, the addition of a generic top-level domain insufficiently differentiates the disputed domain name from the incorporated 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 here finds that the disputed domain name is confusingly similar under 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), 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.
Complainant argues Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Although the WHOIS record indicates Respondent is known as “CAPO OFFSHORE / capitaloneoffshore,” there is no evidence to prove that such an organization exists. Complainant’s search through the California State Corporation Commission database does not reveal record of a company or corporation containing the Registrant organization name and address. See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”). Due to a lack of evidence to the contrary the Panel here finds that Respondent is not commonly known by or authorized to use the disputed domain name. Additionally, Complainant contends it has never authorized Respondent to use the CAPITAL ONE trademark. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant asserts Respondent’s lack of rights or legitimate interests in the <capitaloneoffshore.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 website redirects Internet users to the official Capital One website, <capitalone.com>. Prior panels have decided that when a Respondent’s website resolves to a Complainant’s website, the Respondent insufficiently demonstrates either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Better Existence with HIV v. AAA, FA 1363660 (Nat. Arb. Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). The Panel here finds that Respondent has no rights or legitimate interests in respect of the domain name in dispute under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As 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 has engaged in bad faith registration and use of the <capitaloneoffshore.com> domain name. Complainant alleges Respondent’s website diverts Internet customers to Complainant’s own website, which results in disruption of Complainant’s business through a deliberate attempt to confuse customers as to the nature of the website. Complainant contends Respondent is presumably benefitting from the valuable goodwill that Complainant has established in its trademark, and such actions sufficiently establish bad faith registration under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Nat. Arb. Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel here finds Respondent has registered and used the disputed domain name in 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 <capitaloneoffshore.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 26, 2015
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