Capital One Financial Corp. v. Roben Houspian Singerdi
Claim Number: FA1603001668126
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Roben Houspian Singerdi (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneapp.mobi>, 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 31, 2016; the Forum received payment on March 31, 2016.
On March 31, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitaloneapp.mobi> 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, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2016 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@capitaloneapp.mobi. Also on April 1, 2016, 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 25, 2016, 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 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.
Respondent’s <capitaloneapp.mobi> domain name is confusingly similar to the CAPITAL ONE mark as the domain name incorporates the mark entirely less its space, adding the generic term “app” (which likely references mobile phone applications, directly relating to Complainant’s business), and appending the “.mobi” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <capitaloneapp.mobi> domain name. Respondent is neither 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 redirects Internet users to a site containing malware.
Respondent registered or otherwise has used the disputed domain name in bad faith. Respondent has used the disputed domain to install malware on unsuspecting Internet users’ computers. Such use may be presumed to be for the purpose of Respondent’s commercial gain under Policy ¶ 4(b)(iv). While malware itself is not seen through the enumerated Policy ¶ 4(b) elements, it is therefore nonexclusive evidence of bad faith per Policy ¶ 4(a)(iii).
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 and through its other registrations worldwide.
Respondent is not affiliated with Complainant and has 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 trademark.
Respondent uses the at-issue domain name to infect Internet users with malware.
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(f), 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 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 generic term “app,” a term which is suggestive of Complainant’s online business, and ends with the generic top-level domain name “.mobi”. 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 <capitaloneapp.mobi> 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 “Roben Houspian Singerdi” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <capitaloneapp.mobi> 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 <capitaloneapp.mobi> domain name directs Internet users to a website containing malware where a pop-up message reads:
Your Browsing Activity Has Been Restricted. **Your System has been infected with critical Spyware/Malware/Trojans** A browser lock is in place to prevent further infection of your network, and the networks of others. Call +18444985956 (TOLL-FREE) for Immediate assistance.
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 Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under [Policy ¶ 4(c)(ii)] or a legitimate noncommercial or fair use pursuant to [Policy ¶ 4(c)(iv)]”).
Given the forgoing, 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. Circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As discussed above regarding Respondent’s rights and interests, Respondent’s confusingly similar domain name directs Internet visitors to a website which attempts to infect such visitors a ransomware variant of malware. Using the domain name in this manner demonstrates bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iv) and otherwise. See Zynga Inc. v. Ryan G Foo / PPA Media Services, FA 1650448 (Nat. Arb. Forum January 14, 2016) (concluding that “Respondent has attempted to attract, for commercial gain, Internet users to its website to distribute malware and phish for Internet user personal information, which is bad faith under Policy ¶ 4(b)(iv).”); see also Google Inc. v. Sergey Gridasov, FA0474816 (Nat. Arb. Forum July 5, 2005) (concluding that “…Respondent’s registration and use of the disputed domain names to expose Internet users to malicious software constitutes evidence of bad faith registration and use …”); see also Thomson Reuters v. shasha zhu, FA1640944 (Nat. Arb. Forum November 9, 2015) (finding that Respondent’s use of “…the domain name to redirect Internet users as a part of a scheme to distribute malware…clearly indicates Respondent’s bad faith registration and use of the <thomsoncorporate.com> domain name under Policy ¶ 4(a)(iii).”).
Additionally and although not specifically alleged by Complainant, Respondent registered the <capitaloneapp.mobi> 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 forgoing, 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 <capitaloneapp.mobi> 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 <capitaloneapp.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 26, 2016
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