Capital One Financial Corp. v. Mai Erne / Hara Partners
Claim Number: FA1505001617710
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Mai Erne / Hara Partners (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <aboutcapitalone.us>, registered with WILD WEST DOMAINS, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2015; the Forum received payment on May 4, 2015.
On May 4, 2015, WILD WEST DOMAINS, INC. confirmed by e-mail to the Forum that the <aboutcapitalone.us> domain name is registered with WILD WEST DOMAINS, INC. and that Respondent is the current registrant of the name. WILD WEST DOMAINS, INC. has verified that Respondent is bound by the WILD WEST DOMAINS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@aboutcapitalone.us. Also on May 6, 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 June 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. 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 the CAPITAL ONE mark with the likes of 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 <aboutcapitalone.us> domain name is confusingly similar to the CAPITAL ONE mark as the domain name incorporates the mark entirely, in addition to the generic term “about”, along with the “.us” country-code top-level domain (“ccTLD”).
2. Respondent has no rights or legitimate interests in the <aboutcapitalone.us> 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 per Policy ¶ 4(c)(iii). Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). Further, Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and (iv), respectively. Instead, the disputed domain name resolves to a page which seeks to obtain personal identifying information under the guise of a “WordPress Installation.” See Compl., at Attached Ex. C.
3. Respondent registered and has used the disputed domain name in bad faith. Respondent has used the disputed domain to intentionally disrupt Complainant’s business by offering a “WordPress Installation” service through <aboutcapitalone.us>. Additionally, Respondent’s promotion of its own website and services through the <aboutcapitalone.us> domain name evinces Policy ¶ 4(b)(iv) bad faith because Respondent benefits from the goodwill associated with the CAPITAL ONE mark. Finally, Respondent had actual and/or constructive knowledge with regards to the CAPITAL ONE mark and Complainant’s rights in the mark, demonstrating Policy ¶ 4(a)(iii) bad faith.
B. Respondent
Respondent did not submit a response.
1. Respondent’s <aboutcapitalone.us> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or legitimate interests in the <aboutcapitalone.us> domain name.
3. Respondent registered or used the <aboutcapitalone.us> domain name in bad faith.
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 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 allegedly holds many valid USPTO registrations for the CAPITAL ONE mark, one of which was registered on July 5, 2011 (Reg. No. 3,989,909); and it is such registrations which Complainant argues is satisfactory in a determination of Policy ¶ 4(a)(i) rights. Panels have frequently seen complainants’ rights satisfied through valid USPTO registrations of their marks. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Further, Complainant contends that the <aboutcapitalone.us> domain name is confusingly similar to the CAPITAL ONE mark as the domain name incorporates the mark entirely, in addition to the generic term “about”, along with the “.us” ccTLD. Panels have seen the addition of a generic term and a ccTLD to a fully incorporated mark as unsuccessful in overpowering a finding of confusing similarity per Policy ¶ 4(a)(i). See Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” on to the complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the complainant, and thus the respondent’s domain names are confusingly similar); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Nat. Arb. Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Therefore, this Panel agrees that Respondent’s registration of <aboutcapitalone.us> domain name fails to overcome the notion that it is confusingly similar to the CAPITAL ONE mark.
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 holds the position that Respondent has no rights or legitimate interests in the <aboutcapitalone.us> domain name. To begin, Complainant asserts that 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 per Policy ¶ 4(c)(iii). The Panel looks to the available WHOIS information and consider that Respondent has not submitted any evidence which would rebut the assertion that it is not commonly known by the disputed domain name. Therefore, this Panel sees no foundation upon which a declaration that Respondent is commonly known by the <aboutcapitalone.us> domain name is proper. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and (iv), respectively. Instead, the disputed domain name purportedly resolves to a page which seeks to obtain personal identifying information under the guise of a “WordPress Installation.” See Compl., at Attached Ex. C. Complainant cites to Capital One Financial Corp. v. Gina Cinque / Captive Media, FA 1541001 (Nat. Arb. Forum Feb. 20, 2014), in which the panel concluded that “using a disputed domain name to resolve to a website unrelated to a complainant or complainant’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name.” In light of Respondent’s use of the disputed domain name and the available precedent, the Panel agrees that Respondent is not making an offering which would satisfy Policy ¶ 4(c)(ii) or (iv).
Complainant asserts, and the record reflects, that Respondent has used the disputed domain to intentionally disrupt Complainant’s business by offering a “WordPress Installation” service through <aboutcapitalone.us> which seems to seek out Internet users’ personal information. Panels have seen such use as bad faith disruption under Policy ¶ 4(b)(iii). See Capital One Financial Corporation v. Chris Cabrera, FA 591389 (Nat. Arb. Forum Dec. 19, 2005) (finding use of Complainant’s trademark to sell Respondent’s goods and services “is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)”). Therefore, since Respondent seems to be attempting to offer its services through a confusingly similar domain name, the Panel agrees that disruption of Complainant’s business has occurred and declare Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant maintains that Respondent’s promotion of its own website and services through the <aboutcapitalone.us> domain name evinces Policy ¶ 4(b)(iv) bad faith because Respondent benefits from the goodwill associated with the CAPITAL ONE mark. In Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010), the panel found that “where a disputed domain name offers incentives for the completion of surveys, ‘Internet users are likely to believe that such activities are sponsored by or affiliated with Complainant and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).’” Here, the Panel agrees that Internet users’ completion of the fields included on the resolving site in question is equivalent to a survey, and conjures a similar presumed reward/payoff in the minds of misled Internet users and therefore is an indication of Policy ¶ 4(b)(iv) bad faith.
Finally, Complainant also contends that in light of the fame and notoriety of Complainant's CAPITAL ONE mark, it is inconceivable that Respondent could have registered the <aboutcapitalone.us> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because relevant precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aboutcapitalone.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 12, 2015
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