Capital One Financial Corp. v. Zhichao Yang
Claim Number: FA1501001602625
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, United States. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bcapitalone.com> and <capitolene.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2015; the Forum received payment on January 30, 2015.
On January 30, 2015, GODADDY.COM, LLC confirmed by e-mail to the Forum that the <bcapitalone.com> and <capitolene.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. 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 February 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@bcapitalone.com, postmaster@capitolene.com. Also on February 2, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the CAPITAL ONE mark to identify with its major financial institution that offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients. Complainant has registered CAPITAL ONE with the United States Patent and Trademark Office (“USPTO) (e.g., Reg. No. 3,989,909, registered July 5, 2011), which demonstrates its rights in the mark. The <bcapitalone.com> and <capitolene.com> domain names are confusingly similar to the CAPITAL ONE mark as the domain names are simple misspellings and typos of Complainant’s mark.
Respondent has no rights or legitimate interests in the <bcapitalone.com> and <capitolene.com> domain names. Respondent is not commonly known by the disputed domain name or any variant of CAPITAL ONE. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain names, nor a legitimate noncommercial or fair use. Instead, the disputed domain names resolve to a page displaying a search engine, “related links” and “sponsored listings” from which Respondent is presumably commercially benefitting. Some of the links displayed resolve to websites of Complainant’s competitors.
Respondent registered and has used the disputed domain names in bad faith. Respondent has likely been receiving click-through fees from hyperlinks and a search engine by directing users via the confusingly similar domain names to various commercial links, some of which resolve to Complainant’s competitors’ websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Capital One Financial Corp., uses the CAPITAL ONE mark to identify with its major financial institution that offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients. Complainant has registered CAPITAL ONE with the United States Patent and Trademark Office (“USPTO) (e.g., Reg. No. 3,989,909, registered July 5, 2011).
Respondent, Zhichao Yang, registered the <bcapitalone.com> and <capitolene.com> domain names on October 17, 2012. The disputed domain names resolve to a page displaying a search engine, “related links” and “sponsored listings.”
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 has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i) through registration with the USPTO, despite Respondent’s residence in China. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <bcapitalone.com> and <capitolene.com> domain names are confusingly similar to the CAPITAL ONE mark under Policy ¶ 4(a)(i) as the domain names are simple misspellings of the mark with the addition of the “.com” gTLD. Also, the domain names omit the space between the two-word marks. Alterations in spacing are non-distinctive, comparable to gTLDs, considering spacing is not replicable in domain names. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Further, common typos and misspellings of domain names do not sufficiently distinguish the disputed domain names from Complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
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).
Respondent has no rights or legitimate interests in the <bcapitalone.com> and <capitolene.com> domain names. Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). The WHOIS information lists “Zhichao Yang” as registrant. 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).
Respondent is not making a bona fide offer of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The landing pages for the disputed domain names display a list of hyperlinks that lead to Complainant’s competitors’ websites and a search engine that can be used to access Complainant’s competitors’ websites. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services [under Policy ¶ 4(c)(i)] or a legitimate noncommercial or fair use [under Policy ¶ 4(c)(iii)] when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent is using the bcapitalone.com> and <capitolene.com> domain names to display sponsored links to third-party websites, some of which offer credit card and banking services that compete with those offered under Complainant’s mark. Respondent’s use of hyperlinks that resolve to Complainant’s competitors disrupts Complainant’s business and is bad faith registration and use under Policy ¶ 4(b)(iii). See Capital Once Financial Corp. v. DN Manager / Who-isPrivacy.Net Ltd., FA 1583409 (Nat. Arb. Forum November 24, 2014) (finding that “Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii)” since the at-issue website “features links to competing third-party websites to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <capitalonebnk.com> domain name. Respondent is presumably commercially benefiting from the valuable goodwill Complainant has established in its CAPITAL ONE marks.”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent attracts Internet users to Respondent’s website by creating a likelihood of confusion with the CAPITAL ONE mark. Additionally, Respondent makes use of a search engine that can be used to access the websites of Complainant’s competitors. Presumably, Respondent receives referral fees. Respondent’s use of the disputed domain names for commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Capital Once Financial Corp. v. Above.com Domain Privacy / Above .com Domain Privacy, FA 1584216 (Nat. Arb. Forum November 11, 2014) (concluding that “Respondent’s use of the disputed <capitalonesecuredmastercard.com> domain name, which is confusingly similar to Complainant’s CAPITAL ONE trademark, to seek profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name further demonstrates Respondent’s bad faith in the registration and use of the domain name); 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).”).
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 <bcapitalone.com> and <capitolene.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 12, 2015
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