Capital One Financial Corp. v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1402001544052
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitaloneonlinepayment.com>, registered with Moniker Online Services, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2014; the National Arbitration Forum received payment on February 18, 2014.
On February 19, 2014, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <capitaloneonlinepayment.com> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, 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 February 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2014 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@capitaloneonlinepayment.com. Also on February 20, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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" 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Capital One Financial Corp. of Richmond VA, USA. Complainant owns numerous domestic and international registrations for the mark CAPITAL ONE and related marks comprising the family of CAPITAL ONE marks. Complainant has continuously used its marks since at least its 1997 USA registration in connection with the provision of a broad spectrum of banking and financial services.
Respondent is Domain Admin / Taranga Services Pty Ltd of Wellington, New Zealand. Respondent’s registrar’s address is listed as Portland, OR, USA. Respondent registered the <capitaloneonlinepayment.com> domain name on or about January 6, 2007.
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(e), 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 (Nat. Arb. 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 states that it has used the CAPITAL ONE mark in connection with an array of financial services. Complainant has obtained protection of the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 2,065,991 registered on May 27, 1997). The Panel notes that USPTO registration is recognized as a valid basis for establishment of Policy ¶ 4(a)(i) rights in a mark. See, e.g., W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant further argues that Respondent’s <capitaloneonlinepayment.com> domain name is confusingly similar to the CAPITAL ONE mark. Complainant notes that Respondent merely adds the generic phrase “online payment” and the gTLD “.com” to the mark. Complainant cites Wells Fargo & Co. v. Pinnacle Management Group, Inc., FA 1272346 (Nat. Arb. Forum Aug. 18, 2009) for the proposition that generic terms and gTLDs are not distinguishable additions to a domain name. The Panel here finds that Respondent’s <capitaloneonlinepayment.com> domain name is confusingly similar to the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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). The Complainant has met this burden.
Complainant next argues that Respondent is not commonly known by the disputed domain name. Complainant asserts that the WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information provided lists the registrant of record of the disputed domain name as “Domain Admin redgrape@fastmail.fm / Taranga Services Pty Ltd.” In the absence of any other evidence, the Panel declines to make a finding in favor of Respondent under Policy ¶ 4(c)(ii). The Panel finds that Respondent is not commonly known by the <capitaloneonlinepayment.com> domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further claims that Respondent uses the <capitaloneonlinepayment.com> domain name to promote hyperlink advertisements to Complainant’s competitors. The Panel notes that the <capitaloneonlinepayment.com> domain name resolves to a website filled with advertisements for various credit card services. In Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) the panel found that there was no Policy ¶ 4(c)(i) bona fide offering when the domain name was used to host commercial hyperlinks. The Panel here finds that Respondent has made neither a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, by Respondent’s use of the domain name to promote a variety of hyperlink advertisements.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent seeks to unfairly disrupt Complainant’s business by using the confusingly similar <capitaloneonlinepayment.com> domain name to promote various competing and unrelated services through hyperlink advertisements. The Panel notes that an Internet user can search for, and find, information and hyperlinks related to Complainant’s competitors through the <capitaloneonlinepayment.com> domain name. The Panel finds that Complainant’s evidence supports the assertion that Respondent promotes competing businesses through the <capitaloneonlinepayment.com> domain name, and an inference of Policy ¶ 4(b)(iii) bad faith through unfair commercial disruption. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <capitaloneonlinepayment.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 2, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page