Capital One Financial Corp. v. Desmond Mckinley
Claim Number: FA1611001702476
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Desmond Mckinley (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalone-email.com>, registered with Domain.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically November 11, 2016; the Forum received payment November 11, 2016.
On November 11, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <capitalone-email.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com verified that Respondent is bound by the Domain.com, LLC registration agreement and 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 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@capitalone-email.com. Also on November 14, 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 December 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant registered CAPITAL ONE with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626, registered Aug 13, 1996), which demonstrates its rights in the mark. The <capitalone-email.com> is confusingly similar to the CAPITAL ONE mark as the domain name merely adds a dash, the word “email,” and the generic top-level domain “.com.”
Respondent should be considered as having no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name based on WHOIS information. Respondent’s domain name merely resolves to a parked website displaying sponsored listings related to Complainant’s business and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered the disputed domain name and used it in bad faith. Respondent’s use of the domain name to divert Internet users to a website offering commercial links related to Complainant’s business demonstrates bad faith disruption and confusion and attraction for commercial gain.
Respondent’s Allegations in Response:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent created the disputed domain name June 28, 2016.
Complainant established that it has rights to and legitimate interests in the disputed domain name; Respondent did not do so and has no such rights or legitimate interests.
Respondent registered and used a dispute domain name that is confusingly
similar to Complainant’s protected mark without right or license to do so.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant uses the CAPITAL ONE mark in connection with its business as a financial institution that offers financial products and services to consumers, small businesses and commercial clients. Complainant claims to have registered CAPITAL ONE with the USPTO (e.g., Reg. No. 1,992,626, registered Aug 13, 1996), arguing such registrations demonstrate rights in the mark. See Compl., at Attached Ex. A. This Panel finds that USPTO registrations demonstrate rights in a mark pursuant to Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant claims that Respondent’s domain name <capitalone-email.com> is confusingly similar to the CAPITAL ONE mark. Respondent’s domain name adds a hyphen, the term “email,” and the gTLD “.com.” Addition of punctuation, such as hyphens, and gTLDs do not affect an analysis of confusing similarity under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Merely adding a generic term to a mark does not prevent a finding of confusing similarity. See Disney Enters. Inc. v. McSherry, FA 154589 (Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Taken together, this Panel finds that Respondent’s domain name is confusingly similar to the CAPITAL ONE mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent created a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims that Respondent is not commonly known by the disputed domain name as evidenced by WHOIS information associated with the disputed domain name identifying the Respondent as “Desmon Mckinley,” of the same organization. See Compl., at Attached Ex. B. A respondent is not commonly known by a disputed domain name where the WHOIS information shows no commonality and no evidence or information suggests the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent is wrongfully using the domain name to resolve to a parked website displaying sponsored listings related to Complainant’s business. Respondent’s domain name resolves to a website that displays advertisements for products and services related to Complainant’s CAPITAL ONE mark. Titles for these advertisements include “Capital One Credit Payment,” “Try Discover it® Instead,” “Spark 401K by Capital One.” See Compl., at Attached Ex. D. Using a domain name that is confusingly similar to another’s mark for the purposes of displaying commercial links related to the mark is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent is not using the domain name within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant asserts that Respondent’s use of the domain name to divert Internet users to a website offering commercial links related to Complainant’s business demonstrates bad faith disruption and confusion and attraction for commercial gain. As stated above, RespondenT uses the disputed domain name to resolve to a website displaying various advertisements for Complainant’s own products and services or competing services. See Compl., at Attached Ex. D. Panels have held that using another’s mark in a disputed domain name to display advertisements from which a Complainant commercially benefits demonstrates bad faith under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum April 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). A respondent has competed and disrupted a complainant’s business through displaying advertisements or links that compete with a complainant’s business. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Aizhenhua / Aizhenhua, FA140700157872 (Forum September 17, 2014) (finding that because the complainant operated in the field of automobile parts and services and the respondent was using the disputed domain name to display hyperlinks to companies that operate in the same field, the respondent was disrupting the complainant’s business, demonstrating bad faith according to Policy ¶ 4(b)(iii)). The Panel finds that Respondent registered and used the disputed domain name in bad faith based on Policy ¶ 4(b)(iv) or ¶ 4(b)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalone-email.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Dated: December 21, 2016.
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