Capital One Financial Corp. v. Cecilia Rojas
Claim Number: FA1803001774391
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Cecilia Rojas (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital1financial.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2018; the Forum received payment on March 2, 2018.
On March 5, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capital1financial.com> 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 March 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@capital1financial.com. Also on March 5, 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 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Capital One Financial Corp., is a major financial institution which helped pioneer the mass marketing of credit cards in the early 1990s, and since its inception has consistently used the CAPITAL ONE mark to promote its goods and services. Complainant owns over 100 pending applications or registrations for its CAPITAL ONE mark all over the world, which includes the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,989,909, registered Jul. 5, 2011).
2. Respondent’s <capital1financial.com>[i] domain name is confusingly similar to Complainant’s CAPITAL ONE mark as the domain name incorporates the mark entirely, differing by the change of the word “one” in the mark to the number “1”, as well as the addition of the generic or descriptive term “financial,” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent should be considered as having no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, as demonstrated by the WHOIS information of record and lack of license or authorization from Complainant to use its mark.
4. Further, 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. Rather, Respondent’s domain name redirects internet users seeking Complainant’s website to Respondent’s website, presumably for commercial gain. Further, the domain name resolves to a website offering competing financial and loan services.
5. Respondent’s registration and use of the <capital1financial.com> domain name is in bad faith as Respondent disrupts Complainant’s business by creating a likelihood of confusion with the Complainant’s mark to divert internet users to Respondent’s competitive website. Additionally, Respondent had prior knowledge of Complainant’s famous CAPITAL ONE mark when registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CAPITAL ONE mark. Respondent’s domain name is confusingly similar to Complainant’s CAPITAL ONE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <capital1financial.com> domain name and that Respondent registered and uses the 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 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 numerous worldwide registrations, including with the USPTO (e.g., Reg. No. 3,989,909 registered Jul. 5, 2011). Registration of a mark worldwide, including with the USPTO, is sufficient to demonstrate rights to a mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (“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).”). Accordingly, the Panel finds Complainant’s registrations are sufficient to demonstrate rights to its CAPITAL ONE mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <capital1financial.com> domain name is confusingly similar to its CAPITAL ONE mark, as the domain name incorporates the mark in its entirety, and respondent has changed the term “one” in the mark to the number “1,” and added a generic or descriptive term and a gTLD. Such changes to a mark are insufficient to distinguish the domain name from the mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); 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.). Consequently, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <capital1financial.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent should be regarded as having no rights or legitimate interests in the <capital1financial.com> domain name as Respondent is not commonly known by the domain name. A respondent is not commonly known by a domain name based on the WHOIS information of record, and where a complainant does not authorize or license the respondent to use complainant’s mark. See 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 of the domain name as “Cecilia Rojas.” Further, the record indicates that Complainant has never granted authorization or license to Respondent to use its mark. As a result, the Panel finds Respondent is not commonly known by the <capital1financial.com> domain name.
Complainant asserts Respondent does not use the <capital1financial.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to attract Internet users to its own competitive website presumably for commercial gain. It is uncontradicted in the record that Respondent uses the domain name to resolve to a website offering competing financial and loan services. Such use of a domain name does not establish rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Consequently, Respondent’s use of the <capital1financial.com> domain to redirect internet users to Respondent’s own competing website for commercial gain is not in accordance with Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Under Policy ¶ 4(b)(iii), Complainant argues Respondent has registered and uses the <capital1financial.com> domain name in bad faith, as the record shows Respondent uses the <capital1financial.com> domain name to confuse and attract Internet users to its own website and disrupt Complainant’s business for commercial gain. Bad faith exists per Policy ¶¶ 4(b)(iii) and (iv) where a respondent uses a domain name confusingly similar to the mark of another in competition with the holder of that mark. See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Consequently, Respondent’s registration and use of the <capital1financial.com> domain name disrupts Complainant’s business under Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant asserts Respondent had prior knowledge of Complainant’s famous CAPITAL ONE trademark when registering the <capital1financial.com> domain name. See Capital One Financial Corp. v. Henry Olori / Request Media Network, FA1647370 (Forum December 15, 2015) (finding that . . . the Respondent had actual knowledge of the Complainant’s registered and famous trademark due to . . . the similarity between Respondent and Complainant’s websites and the confusing similarity of Respondent’s domain name . . . .). The similarity between Respondent’s domain name and Complainant’s mark, and Respondent’s resolving website offering services identical to that of the Complainant, shows that Respondent had actual knowledge of the mark and Complainant’s rights therein when it registered and subsequently used the <capital1financial.com> domain name. Therefore, Respondent’s registration and use of the <capital1financial.com> domain name is in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <capital1financial.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 2, 2018
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