Capital One Financial Corp. v. Capital Group Srl Societ/Ditta Capital Group Srl Societ/Ditta
Claim Number: FA1505001617695
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Capital Group Srl Societ/Ditta Capital Group Srl Societ/Ditta (“Respondent”), represented by Massimo Colaianni, Bergamo, Bulgaria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalmoneybank.com>, registered with TUCOWS, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2015; the Forum received payment on May 4, 2015.
On May 5, 2015, TUCOWS, INC. confirmed by e-mail to the Forum that the <capitalmoneybank.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 May 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 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@capitalmoneybank.com. Also on May 7, 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.
A timely Response was received and determined to be complete on May 27, 2015.
An Additional Submission was received from Complainant and determined to be compliant on June 1, 2015. No Additional Submission was received from Respondent.
Complainant’s Additional Submission, along with numerous attachments were reviewed and studied by the panel, which found this material very helpful in reaching its decision.
On June 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge ROBERT T. PFEUFFER, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant uses the CAPITAL ONE BANK mark in connection with its financial services. Complainant has registered the CAPITAL ONE BANK mark with the likes of the United States Patent and Trademark Office (“USPTO”), whereas the registration date was July 12, 2011, with the affixed registration number 3,993,433. This trademark registration, along with its exhaustive list of other trademark registrations incorporating the CAPITAL ONE mark establishes Complainant’s Policy ¶ 4(a)(i) rights. Respondent’s <capitalmoneybank.com> is confusingly similar to the CAPITAL ONE BANK mark as it incorporates the mark entirely, eliminates the spacing between words, adds the letters “m” and “y” to the “ONE” in “CAPITAL ONE BANK”, and incorporates the generic top-level domain (“gTLD”) “.com.” Respondent’s failure to use the <capitalmoneybank.com> domain name imputes that it intends to sell the domain in the future, or to divert Internet users away from Complainant’s legitimate web offerings.
There is a fundamental distinction to be made between the words “MONEY” and “ONE”, which do not contribute to Internet user confusion as they are sufficiently distinct from the mark.
Capital Group Srl carries on activities of a credit mediator since January 7, 2013 and therefore is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant has failed to support its contentions that Respondent intends to sell, rent, or transfer the disputed domain name. Further, Respondent has never heard of “Capital One Financial Corp.” and is not purposed to compete with it or disrupt its business by diverting Internet users away from Complainant, as its clientele base is in Italy. The <capitalmoneybank.com> is in fact under construction and not being used in bad faith.
Respondent’s arguments and evidence are insufficient in demonstrating that it is commonly known by the disputed domain name and intended for a future use of <capitalmoneybank.com>.
Further, if Respondent only operates in Italy and registered in good faith, then an Italian domain name registration would have logically followed. Additionally, the disputed domain name has been inactively held for more than 545 days since it was created.
FINDINGS
The contentions of Complainant are fully supported by the evidence.
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.
Complainant uses the CAPITAL ONE BANK mark in connection with its financial services. Complainant urges it has registered the CAPITAL ONE BANK mark with the USPTO, trademark registration, along with its exhaustive list of other trademarks. 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).
Next, Complainant asserts that Respondent’s <capitalmoneybank.com> is confusingly similar to the CAPITAL ONE BANK mark as it incorporates the mark entirely, eliminates the spacing between words, adds the letters “m” and “y” to the “ONE” in “CAPITAL ONE BANK”, and incorporates the gTLD “.com.” Various panels have previously agreed that such minor alterations to a valid trademark fail to belie the contention that a disputed domain name is confusingly similar under an analysis of Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
The Panel is aware 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), 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, FA741828 (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 advocates that Respondent has no rights or legitimate interests in the <capitalmoneybank.com> domain name. Complainant represents that no authorization has been given from Complainant to Respondent to register any variation of the CAPITAL ONE BANK mark with respect to any domain name registration, nor does the available documentary evidence establish Respondent as commonly known by the disputed domain name. The Panel has viewed the available documentary evidence, such as the WHOIS information on record, as well as Respondent’s submission, in determining whether Respondent is commonly known by the <capitalmoneybank.com> domain name. In light of such evidence, the Panel agrees there is no basis in declaring Respondent has rights in the disputed domain name under Policy ¶ 4(c)(ii). 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).
Moreover, Respondent is shown to have not used the disputed domain name in connection with any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, Complainant asserts that Respondent’s <capitalmoneybank.com> domain name contains no content, save for a statement complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction.
Next, Complainant argues that Respondent’s <capitalmoneybank.com> is confusingly similar to the CAPITAL ONE BANK mark as it incorporates the mark entirely, eliminates the spacing between words, adds the letters “m” and “y” to the “ONE” in “CAPITAL ONE BANK”, and incorporates the gTLD “.com.” Various panels have previously agreed that such minor alterations to a valid trademark fail to belie the contention that a disputed domain name is confusingly similar under an analysis of Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant’s main contention regarding Respondent’s bad faith is that Respondent’s inactive holding of the <capitalmoneybank.com> domain name imputes bad faith. Complainant provides the holding in Capital One Financial Corp. v. Ralph Ratchford, FA 1602630 (Nat. Arb. Forum Feb. 26, 2015), in which the panel held:
“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.”
Absent any other indication of use, the Panel determines that the evidence of the inactively held domain was registered and used in bad faith. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalmoneybank.com> domain name
is TRANSFERRED from Respondent to Complainant .
ROBERT T. PFEUFFER, Panelist
Dated: June 16, 2015
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