Capital One Financial Corp. v. HAcker Damson / Hacker Damson Company
Claim Number: FA1802001772970
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is HAcker Damson / Hacker Damson Company (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital1saveup.com>, registered with Web4Africa Inc..
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2018; the Forum received payment on February 22, 2018.
On February 28, 2018, Web4Africa Inc. confirmed by e-mail to the Forum that the <capital1saveup.com> domain name is registered with Web4Africa Inc. and that Respondent is the current registrant of the names. Web4Africa Inc. has verified that Respondent is bound by the Web4Africa Inc. 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 February 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2018 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@capital1saveup.com. Also on February 28, 2018, 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 March 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Capital One Financial Corp., is a major financial institution founded in 1988 which later helped to pioneer the mass marketing of credit cards. Complainant offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients, and has consistently used the CAPITAL ONE mark to promote its goods and services since its inception. Additionally, Complainant, either directly or via one of its wholly-owned subsidiaries, owns over 100 pending applications or registrations for the CAPITAL ONE mark all over the world and with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3442400 registered Jun. 18, 2014). Respondent’s <capital1saveup.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark as the mark is incorporated entirely, changes “one” to a numerical form, adds the generic term “saveup,” and adds the “.com” generic top-level domain (“gTLD”).
ii) 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 the WHOIS information of record, and Respondent lacks authorization and license to use Complainant’s mark. Respondent’s disputed domain name contains no content, and thus Respondent fails to use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent fails to make an active use of the disputed domain name.
B. Respondent
Respondent did not submit a Response.
1. Complainant is a major financial institution founded in 1988 which later helped to pioneer the mass marketing of credit cards. Complainant offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients, and has consistently used the CAPITAL ONE mark to promote its goods and services since its inception.
2. Complainant has established its trademark rights in its CAPITAL ONE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3442400 registered Jun. 18, 2014).
3. Respondent registered the <capital1saveup.com> domain name on November 20, 2017.
4. Respondent’s domain name resolves to a blank or inactive page.
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 (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 claims rights to its CAPITAL ONE mark through over 100 pending applications or registrations all over the world including with the USPTO. Registration with the USPTO and/or registrations with numerous trademark agencies all over the world are sufficient to establish rights to a mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).). Complainant provides copies of the trademark registrations for the CAPITAL ONE mark (e.g., Reg. No. 3442400 registered Jun. 18, 2014). See Compl. Ex. A. Accordingly, the Panel finds Complainant has established sufficient rights to its CAPITAL ONE mark.
Next, Complainant argues Respondent’s <capital1saveup.com> domain name is confusingly similar to its CAPITAL ONE mark. Similar changes to a mark have been found insufficient to sustain an analysis for confusing similarity pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (finding the <pandora1.com> domain name to be confusingly similar to Complainant’s PANDORA ONE mark due to the similarity between the word ONE and the numeral 1 in meaning and sound.). Here, Complainant specifies Respondent’s domain name adds the generic term “saveup” and the gTLD “.com” to its mark, and changes the “one” in its CAPITAL ONE mark to the number “1.” Consequently, the Panel finds Respondent’s <capital1saveup.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends Respondent has no rights or legitimate interests in the <capital1saveup.com> domain name as Respondent is not commonly known by the domain name. Absent a response, a respondent may be found to be not commonly known by a domain name based on the WHOIS information of record, and/or where a complainant never grants authorization or license to respondent to use its mark. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name); see also Reese v. Morgan, FA 917029 (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 WHOIS information of record lists the registrant as “Hacker Damson” and Complainant states no authorization or license was granted to Respondent for the use of its mark. See Compl. Ex. B. As a result, the Panel finds Respondent is not commonly known by the disputed domain name.
Next, Complainant asserts Respondent fails to use the <capital1saveup.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Failure to make demonstrable preparations to use a domain name can evince a finding that a respondent failed to use said domain name in connection with a bona fide offer per Policy ¶ 4(c)(i), or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant submits screenshot evidence of the resolving website for the disputed domain name, which Complainant asserts contains no content aside from a message displaying “This site can’t be reached.” See Compl. Ex. C. The Panel agrees with Complainant and finds Respondent’s inactive use of the disputed domain name is not in connection with Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends that the registration of the disputed domain name, followed by a passive holding of the disputed domain name, constitutes ‘use in bad faith.’ Complainant indicates Respondent’s domain name resolves to a blank or inactive page. See Compl. Ex. C. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). See alsoTelstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant, Capital One Financial Corp., is a major financial institution founded in 1988 which later helped to pioneer the mass marketing of credit cards. Complainant offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients, and has consistently used the CAPITAL ONE mark to promote its goods and services since its inception. Additionally, Complainant, either directly or via one of its wholly-owned subsidiaries, owns over 100 pending applications or registrations for the CAPITAL ONE mark all over the world and with the United States Patent and Trademark Office. As such, the Complainant’s mark ‘CAPITAL ONE’ is considered as being a well-known and reputable service mark, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Consequently, the Panel finds Respondent registered and used the disputed domain name in bad faith per 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 <capital1saveup.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 26, 2018
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