Capital One Financial Corp. v. Alvaro Ortiz Sacristan
Claim Number: FA1511001647375
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Alvaro Ortiz Sacristan (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonegroup.net>, 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 November 17, 2015; the Forum received payment on November 17, 2015.
On November 18, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitalonegroup.net> 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 November 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@capitalonegroup.net. Also on November 18, 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 November 19, 2015.
On November 23, 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.
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), along with registering the mark in numerous other countries worldwide including Spain, all which demonstrates its rights in the mark.
Respondent’s <capitalonegroup.net> domain name is confusingly similar to the CAPITAL ONE mark as the mark is incorporated entirely while merely eliminating spacing between words, adding the generic term “group” and the generic top-level domain (“gTLD”) “.net.”
Respondent has no rights or legitimate interests in the disputed <capitalonegroup.net> domain name. Respondent is not commonly known by <capitalonegroup.net>, or any variations of the CAPITAL ONE mark. Further, Respondent has failed to use the disputed domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Respondent diverts Internet users to its own website login page, presumably for financial gain.
Respondent has registered and used the <capitalonegroup.net> domain name in bad faith. Respondent’s redirection to its own site constitutes bad faith disruption and attraction for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). Further, Respondent had actual and/or constructive knowledge of the CAPITAL ONE mark when registering and using the disputed domain name.
B. Respondent
Respondent registered the domain in good faith to further its business interests in the real estate industry. Respondent had no knowledge that it was infringing any entity’s interests in a mark. The Panel notes that the <capitalonegroup.net> domain name was registered on April 30, 2015.
Complainant has rights in the CAPITAL ONE mark through its registration of such mark with the USPTO and through its other registrations worldwide.
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 its own commercial website.
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.
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 and elsewhere worldwide 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.”).
The at-issue domain name starts with Complainant’s CAPITAL ONE trademark less its space, adds the term “group,” a term which is suggestive of Complainant’s business, and ends with the top-level domain name “.net”. The differences between Respondent’s domain name and Complainant’s CAPITAL ONE trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <capitalonegroup.net> domain name is confusingly similar to Complainant’s CAPITAL ONE mark under Policy ¶ 4(a)(i). 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, 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).
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 “Alvaro Ortiz Sacristan” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <capitalonegroup.net> 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 <capitalonegroup.net> domain name directs Internet users to Respondent’s own commercial website. Using the confusingly similar 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, e.g., Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 0180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
Given the forgoing and without contrary sufficient evidence from Respondent to overcome the evidence set forth by Complainant, Complainant satisfies its 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, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s confusingly similar domain name is likely to leave visitors to Respondent’s <capitalonegroup.net> website with the false impression that the website is authorized or sponsored by Complainant when it is not. Using the domain name in this manner demonstrates bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See also Capital One Financial Corporation and Capital One Bank v. Spider Webs, LTD., FA 0098830 (Nat. Arb. Forum Sept. 28, 2001) (“There is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website and services.”); see also, Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Additionally, Respondent registered the <capitalonegroup.net> domain name knowing that Complainant had trademark rights in the CAPITAL ONE mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark. Given the foregoing, it is clear that Respondent intentionally registered the at-issue domain name to 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 <capitalonegroup.net> 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 <capitalonegroup.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 25, 2015
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