Capital One Financial Corp. v. Todd Yancey
Claim Number: FA1503001612152
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Todd Yancey (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneira.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2015; the Forum received payment on March 30, 2015.
On March 31, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitaloneira.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 April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 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@capitaloneira.com. Also on April 1, 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 April 27, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
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) and has numerous related registrations worldwide, which demonstrates its rights in the mark.
The <capitaloneira.com> domain name is confusingly similar to the CAPITAL ONE mark as the domain name adds the descriptive term “ira” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <capitaloneira.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of CAPITAL ONE in a domain name. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactively held page displaying the message “Website Coming Soon.”
Respondent registered and has used the disputed domain name in bad faith. Respondent has inactively held the <capitaloneira.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CAPITAL ONE mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address to an inactive webpage displaying “Website Coming Soon.”
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its CAPITAL ONE mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Capital One Financial Corp. v. Paydayloanz.com, FA1463493 (Nat. Arb. Forum October 22, 2012) (concluding that Complainant has “secured rights in its CAPITAL ONE mark through its various global trademark registrations.”);
In forming the at-issue domain name Respondent adds the term “ira” to Complainant’s CAPITAL ONE trademark less its space and then appends the top-level domain name “.com” to the resulting string. The descriptive term “ira” directly relates to, and is suggestive of, Complainant’s business. These alterations to Complainant’s CAPITAL ONE trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <capitaloneira.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA 1584216 (Nat. Arb. Forum November 11, 2014) (finding that the at-issue domain name is confusingly similar to Complainant’s CAPITAL ONE mark because the “domain name contains the entire mark, with only the elimination of the space between its terms and the addition of a generic Top Level Domain (‘gTLD’) and the words ‘secured mastercard,’ which describe an aspect of Complainant’s business. These alterations of the mark, in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also, Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain); see also, Capital One Financial Corp. v. Capital funding, FA 1579521 (Nat. Arb. Forum October 16, 2014) (finding that “the inclusion of the term ‘fund’ adds to any confusion since it is suggestive of activity within the scope of the CAPITAL ONE mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Todd Yancey” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <capitaloneira.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s at-issue domain name addresses an inactive webpage displaying the message “Website Coming Soon.” Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”)
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent held the <capitaloneira.com> domain name inactively. Using the domain name in this manner suggests bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also, Capital One Financial Corp. v. Ralph Ratchford, FA 1602630 (Nat. Arb. Forum February 26, 2015) (finding that where “Respondent’s only apparent use of the disputed domain name to date has been for a website stating that it is ‘coming soon…’ Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant’s mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain for that purpose.”)
Additionally and although Complainant does not expressly make such a contention in its Complaint, the Panel finds that Respondent registered the <capitaloneira.com> domain name knowing that Complainant had trademark rights in the CAPITAL ONE mark. Respondent’s prior knowledge is evident from its incorporation of Complainant’s entire trademark and the suggestive term “ira” into the confusingly similar <capitaloneira.com> domain name. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <capitaloneira.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneira.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 27, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page