Capital One Financial Corporation v.
LaPorte Holdings, Inc.
Claim
Number: FA0502000417712
Complainant is Capital One Financial Corporation (“Complainant”),
represented by Douglas A. Rettew, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P.,
901 New York Avenue NW, Washington, DC 20001. Respondent is LaPorte Holdings Inc. (“Respondent”),
c/o Nameking, Inc., 2202 S. Figueroa St., Suite 721, Los Angeles, CA 90023.
The
domain names at issue are <capilalone.com>, <capiltalone.com>, <capital0ne.com>, <capitalcone.com>,
<capitalonel.com>, <capitlalone.com>, <capitolonebowl.com>,
<captialonebank.com>, <getmycapitalonecard.com>, and
<servicecapitalone.com>, registered with Nameking.com, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 10, 2005.
On
February 9, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <capilalone.com>, <capiltalone.com>, <capital0ne.com>,
<capitalcone.com>, <capitalonel.com>, <capitlalone.com>,
<capitolonebowl.com>, <captialonebank.com>, <getmycapitalonecard.com>,
and <servicecapitalone.com> are registered with Nameking.com,
Inc. and that Respondent is the current registrant of the names. Nameking.com,
Inc. has verified that Respondent is bound by the Nameking.com, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
February 15, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 7, 2005 by which Respondent could file a response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@capilalone.com, postmaster@capiltalone.com,
postmaster@capital0ne.com, postmaster@capitalcone.com, postmaster@capitalonel.com,
postmaster@capitlalone.com, postmaster@capitolonebowl.com, postmaster@captialonebank.com,
postmaster@getmycapitalonecard.com, and postmaster@servicecapitalone.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
March 11, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration 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.”
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the National
Arbitration 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 names be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <capilalone.com>, <capiltalone.com>, <capital0ne.com>,
<capitalcone.com>, <capitalonel.com>, <capitlalone.com>,
<capitolonebowl.com>, <captialonebank.com>, <getmycapitalonecard.com>,
and <servicecapitalone.com> domain names are confusingly
similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or
legitimate interests in the <capilalone.com>, <capiltalone.com>, <capital0ne.com>,
<capitalcone.com>, <capitalonel.com>, <capitlalone.com>,
<capitolonebowl.com>, <captialonebank.com>, <getmycapitalonecard.com>,
and <servicecapitalone.com> domain names.
3. Respondent registered and used the <capilalone.com>, <capiltalone.com>, <capital0ne.com>,
<capitalcone.com>, <capitalonel.com>, <capitlalone.com>,
<capitolonebowl.com>, <captialonebank.com>, <getmycapitalonecard.com>,
and <servicecapitalone.com> domain names in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant is
one of the nation’s leading and best known financial institutions. Complainant
serves over 47 million customers, manages loans totaling $70.2 billion, and
employs over 17,000 associates worldwide. Complainant has offered a range of
financial services under the CAPITAL ONE mark since at least as early as 1994.
Complainant is one of the top ten issuers of MasterCard and Visa credit cards
in the United States. Complainant spends hundreds of millions of dollars
annually advertising, marketing, and promoting its CAPITAL ONE-branded services
through a variety of media. In 2003 alone, Complainant spent over $100 million
advertising and promoting the CAPITAL ONE mark. Complainant has also operated a
website at the <capitalone.com> domain name since 1995. Millions of
Complainant’s customers use Complainant’s website to service their accounts and
obtain information. Complainant has promoted its CAPITAL ONE mark by sponsoring
various sporting events, including the “Capital One Bowl,” a national collegiate
football bowl. Complainant holds numerous trademark registrations that
incorporate the CAPITAL ONE mark, including U.S. Reg. No. 2,065,992 (issued May
27, 1997), which is on the Principal Register of the United States Patent and
Trademark Office.
Respondent
registered the <getmycapitalonecard.com> domain name on December
5, 2003. The other nine disputed domain names were registered between November
2002 and February 2003. Respondent uses the domain names for pay-per-click
directory websites, which advertise financial services that directly compete
with Complainant. Internet users who visit the disputed domain names are also
subjected to pop-up advertisements. The pay-per-click directory websites are
generated by DomainSponsor.com, a company that pays commissions to domain name
owners for revenues generated from searches and pop-up advertisements.
Respondent is not licensed or authorized to use Complainant’s mark for any
purpose.
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.”
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(e), 14(a) and 15(a) of the Rules and draw such inferences it
considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Complainant has
established that it has rights in the CAPITAL ONE mark through registration
with the United States Patent and Trademark Office and through the use of the
mark in commerce since 1994. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions
have held that registration of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive and stating that a respondent has the burden of refuting this
assumption).
The <capilalone.com>,
<capiltalone.com>, <capital0ne.com>, <capitalcone.com>,
<capitalonel.com>, and <capitlalone.com> domain names
are confusingly similar to Complainant’s CAPITAL ONE mark because each name
incorporates a misspelling of the mark while removing a space from the mark and
adding the “.com” generic top-level domain. Misspelling words in the mark,
removing a space from the mark, and adding a generic top-level domain do not
distinguish these domain names from Complainant’s mark under Policy ¶ 4(a)(i). See
Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum
Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE,
“as spaces are impermissible in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, the respondent did not create a distinct mark and that the
misspelling rendered the domain name confusingly similar to the complainant’s
marks); see also Hewlett-Packard
Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the
domain name <hewlitpackard.com> to be identical or confusingly similar to
the complainant’s HEWLETT-PACKARD mark).
The <capitolonebowl.com>,
<captialonebank.com>, <getmycapitalonecard.com>, and <servicecapitalone.com>
domain names are confusingly similar to Complainant’s well-known CAPITAL ONE
mark because each incorporates the mark or a misspelling of the mark while
merely removing a space from the mark and adding generic terms (“bowl,” “bank,”
“get my . . . card,” and “service”) and the “.com” generic top-level domain
name to the mark. Adding generic terms to Complainant’s mark does not
distinguish these domain names from the mark. See Space Imaging
LLC v. Brownell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where the respondent’s domain
name combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb.
12, 2001) (finding that the addition of the generic word “net” to the
complainant’s ICQ mark made the <neticq.com> domain name confusingly
similar to the complainant’s mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided under Policy ¶¶ 4(c)(i)-(iii).
Such a showing shifts Complainant’s burden to Respondent, who must come forward
with evidence rebutting Complainant’s allegations in order to prevail on this
element. In this case, Complainant has made a prima facie showing that
Respondent does not have any rights or legitimate interests in the disputed
domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no
rights or legitimate interests in respect of the Domain Name requires the
Complainant to prove a negative . . . . [I]t is sufficient for the Complainant
to show a prima facie case and the burden of proof is then shifted [to
the] Respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002) (holding that where a complainant has asserted
that a respondent has no rights or legitimate interests with respect to the
domain name, it is incumbent on the respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”).
Because
Respondent has failed to submit a response in this proceeding, the Panel may
accept as true all reasonable allegations submitted by Complainant in the
Complaint. Furthermore, since Complainant has made a prima facie showing
that Respondent does not have any rights or legitimate interests in the
disputed domain names, the burden is shifted to Respondent to demonstrate that
it has rights or legitimate interests in the domain names. In this proceeding,
Respondent has not submitted a response. Thus, Respondent has failed to present
any circumstances under which it could substantiate rights or legitimate
interests in the disputed domain names. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent had no rights or legitimate interests in the
domain name because it never submitted a response or provided the panel with
evidence to suggest otherwise); see also Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that
in the absence of a response the panel is free to make inferences from the very
failure to respond and assign greater weight to certain circumstances than it
might otherwise do).
Respondent
is using the disputed domain names to direct Internet users to websites that
provide links to Complainant’s competitors. The Panel infers that Respondent
commercially benefits from its diversion by receiving pay-per-click fees when
Internet users follow the links on the websites. Respondent’s use of domain
names that are confusingly similar to Complainant’s CAPITAL ONE mark dilutes
Complainant’s mark by diverting Internet users to competing websites and is not
a use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
the respondent generated commercial gain by intentionally and misleadingly
diverting users away from the complainant’s site to a competing website); see
also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that the respondent had no rights or legitimate interests in a domain
name that used the complainant’s mark to redirect Internet users to a
competitor’s website).
No
evidence before the Panel suggests Respondent is commonly known by the disputed
domain names under Policy ¶ 4(c)(ii). Respondent’s WHOIS information
indicates that the registrant of the disputed domain names is known as “LaPorte
Holdings, Inc.” and is not known by the confusingly similar second-level
domains that infringe on Complainant’s CAPITAL ONE mark. Moreover, Respondent
is not authorized or licensed to use Complainant’s mark for any purpose. Thus,
the Panel finds that Respondent has no rights or legitimate interests in the
disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent makes
use of confusingly similar variations of Complainant’s CAPITAL ONE mark in its
domain names to ensnare unsuspecting Internet users. Respondent then redirects
the users to websites that provide links to various commercial websites. The
Panel infers that Respondent receives pay-per-click fees when Internet users
follow the links on its websites. Respondent is profiting from the unauthorized
use of Complainant’s registered mark in its domain names. Such infringement is
what the Policy was intended to remedy and is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
the respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website); see also
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a
respondent profits from its diversionary use of a complainant’s mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent
registered and used domain names that are confusingly similar to Complainant’s
mark for the purpose of directing Internet users to businesses that offer
services that compete with Complainant. Respondent’s use of the disputed domain names establishes that
Respondent registered and used the domain names for the purpose of disrupting
the business of a competitor, which evidences bad faith registration and use
under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain names, additional
factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s <capilalone.com>,
<capiltalone.com>, <capital0ne.com>, <capitalcone.com>,
<capitalonel.com>, and <capitlalone.com> domain names
incorporate common misspellings of Complainant’s well-known CAPITAL ONE mark.
Respondent diverts Internet users who accidentally mistype Complainant’s mark
to Respondent’s competing websites. The Panel finds that Respondent engaged in
the practice of typosquatting, which is strong evidence that Respondent
registered and used these domain names in bad faith under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is inherently parasitic and of itself evidence of
bad faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding
that the respondent registered and used the <zonelarm.com> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii) because the
name was merely a typosquatted version of the complainant’s ZONEALARM
mark. “Typosquatting, itself is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc.
v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of the
complainant’s DERMALOGICA mark and stating
that “[t]yposquatting itself is evidence of bad faith registration and use
pursuant to Policy 4(a)(iii)”).
Respondent’s
registration of the disputed domain names, which are confusingly similar to the
CAPITAL ONE mark, suggests that Respondent knew of Complainant’s rights in the
mark. Additionally, Complainant’s trademark registrations on the Principal
Register of the United States Patent and Trademark Office gave Respondent
constructive notice of Complainant’s mark. Moreover, the fact that Respondent’s
websites contain links to Complainant’s competitors evidences that Respondent
was aware of Complainant’s rights. Thus, the Panel finds that Respondent chose
the disputed domain names based on the distinctive and well-known qualities of
Complainant’s mark, which evidences bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the “domain names are so obviously connected with the Complainants that
the use or registration by anyone other than Complainants suggests
‘opportunistic bad faith’”); see also
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding
bad faith registration and use where it is “inconceivable that the respondent
could make any active use of the disputed domain names without creating a false
impression of association with the Complainant”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb.
Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <capilalone.com>, <capiltalone.com>, <capital0ne.com>, <capitalcone.com>,
<capitalonel.com>, <capitlalone.com>, <capitolonebowl.com>,
<captialonebank.com>, <getmycapitalonecard.com>, and
<servicecapitalone.com> domain names be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 25, 2005
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