Capital One Financial Corp. v. C W
Claim Number: FA1706001737098
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is C W (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name is <capiatlone.com>, registered with eNom, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2017; the Forum received payment on June 23, 2017.
On June 23, 2017, eNom, LLC confirmed by e-mail to the Forum that the <capiatlone.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 June 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2017 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@capiatlone.com. Also on June 26, 2017, 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 July 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard 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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the CAPITAL ONE mark to market a wide variety of financial products and services.
Complainant holds a registration for the CAPITAL ONE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,065,992, registered May 27, 1997, renewed May 27, 2007.
Respondent registered the domain name <capiatlone.com> on March 28, 2002.
The domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the CAPITAL ONE mark for any purpose.
Respondent fails to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial fair use.
The domain name resolves to a search engine that displays links to other websites (called “sponsored listings”), some of which belong to Complainant’s commercial competitors.
Respondent’s use of the domain name is an attempt to profit financially by way of pay-per-click hyperlinks and fees from advertisements.
Respondent has no rights to or legitimate interests in the domain name.
Respondent use of the domain name disrupts Complainant’s business.
Respondent has a history of involvement in UDRP proceedings in which it was found to have registered and used other domain names in bad faith.
Respondent has attempted to conceal its identity by registering the domain name through a privacy service.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the CAPITAL ONE trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights….
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <capiatlone.com> domain name is confusingly similar to Complainant’s CAPITAL ONE trademark. The domain name contains the mark in its entirety, with but two minor changes, i.e.: switching the placement of the letters “a” and “t,” and the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum August 6, 2015) (finding confusing similarity between a UDRP complainant’s mark and a challenged domain name where a respondent transposed the letters “a” and “t” in the RETAILMENOT mark in creating the <reatilmenot.com> domain name.).
See also AOL Inc. v. Morgan, FA 1349260 (Forum November 4, 2010) (concluding, under Policy ¶ 4(a)(i), that the addition of the generic top-level domain (“gTLD”) “.com” to the mark of another in creating a domain name did not distinguish the domain name from that mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <capiatlone.com> domain name, and that Complainant has not authorized Respondent’s use of the CAPITAL ONE mark. Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “C W,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum August 28, 2014) (finding that a respondent was not commonly known by the <guardair.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information identified the registrant of that domain name as “Pablo Palermo.”)
We next observe that Complainant asserts, without objection from Respondent, that the disputed domain name resolves to a search engine that displays pay-per-click hyperlinks and advertisements (called “sponsored listings”), some of which resolve to the websites of Complainant’s commercial competitors. This employment of the domain name constitutes 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, for example, CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015):
The Panel finds that Respondent’s use of the … name to promote links in competition with Complainant’s … services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The record indicates that Respondent, operating under the names “JEAN LUCAS / DOMCHARME GROUP,” has been a respondent in a number of UDRP proceedings in which it was found to have registered and used in bad faith domain names that were confusingly similar to the marks of others. See Capital One Fin. Corp. v. JEAN LUCAS / DOMCHARME GROUP, FA1650469 (Forum January 4, 2016) (concluding that “Respondent’s domain name resolves to a website that displays commercial click-through links from which Respondent presumably profits.…Respondent has acted in bad faith under Policy ¶ 4(b)(iv).”); see also Under Armour, Inc. v. JEAN LUCAS / DOMCHARME GROUP, FA1603208 (Forum March 16, 2015) (finding “…typosquatting from the fact that Respondent substituted one letter for another to create a common misspelling of the mark… [t]herefore, the Panel agrees Respondent to have engaged in typosquatting, and finds bad faith under Policy ¶ 4(a)(iii)”); further see Macy’s Retail Holdings, Inc. v. JEAN LUCAS / DOMCHARME GROUP, FA1581348 (Forum October 29, 2014) (concluding that “Respondent has been a party to numerous prior proceedings under the Policy, including Orbitz Worldwide, LLC v. Domcharme Group C/O Jean Lucas, FA 1495346 (Forum June 4, 2013) (finding that several domain names were registered in bad faith); in addition, see Liberty Procurement Co. v. Domcharme Group / Jean Lucas, FA 1481719 (Forum February 26, 2013) (finding that the <bdbathandbeyond.com> domain name was registered in bad faith); and see Kohl’s Illinois, Inc. v. Domcharme Group / Jean Lucas / lohls.com / Elias Skander, FA 1474698 (Forum January 23, 2013) (finding that several domain names were registered in bad faith); finally see Brookstone Co. v. Domcharme Group / Jean Lucas, FA 1393874 (Forum July 12, 2011) (finding that <broookstone.com> was registered in bad faith).
Under Policy ¶ 4(b)(ii), this pattern of bad faith registration and use of domain names stands as evidence of Respondent’s bad faith in registering and using the domain name at issue in this proceeding. See, for example, Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004):
Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).
To the same effect, see also Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum November 30, 2012).
We are also convinced by the evidence that Respondent’s use of the domain name <capiatlone.com>, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this too demonstrates Respondent’s bad faith in the registration and use of the domain name. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015):
The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).
Finally, under this head of the Policy, it is evident from the record that Respondent uses the <capiatlone.com> domain name, which is confusingly similar to Complainant’s CAPITAL ONE trademark, to attract Internet users in order to profit by way of receipt of click-through revenue. Under Policy ¶ 4(b)(iv), this employment of the domain name further shows Respondent’s bad faith registration and use of it. See Staples, Inc. v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014):
Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <capiatlone.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 25, 2017
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