Capital One Financial Corp. v. Bhadhrika Nirmali Wijendrage
Claim Number: FA1505001617687
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Bhadhrika Nirmali Wijendrage (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <www-capitalonebank.com>, registered with PSI-USA, Inc. dba Domain Robot.
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 May 4, 2015; the Forum received payment on May 4, 2015.
On May 5, 2015, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <www-capitalonebank.com> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 May 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2015 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@www-capitalonebank.com. Also on May 5, 2015, 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 June 2, 2015, 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 has registered both the CAPITAL ONE mark (e.g., Reg. No. 3,442,400, registered June 3, 2008), and the CAPITAL ONE BANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,419,972, registered April 29, 2008). Both marks are used on or in connection with the sale of banking and financial services. The <www-capitalonebank.com> domain name is confusingly similar to both of Complainant’s marks because the domain name takes advantage of a common misspelling or typographical error and adds the generic top-level domain (“gTLD”) “.com.”
(ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known as either of the disputed domain names, nor is Respondent a licensee of Complainant. Further, Respondent is using the domain names to host a website displaying a search engine and links to Complainant’s competitors. Respondent is also typosquatting, which negates Respondent’s ability to have rights or legitimate interests.
(iii) Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business and attempting to commercially profit from a likelihood of confusion. Respondent is also typosquatting in bad faith.
B. Respondent
Respondent did not submit a timely response. The Panel notes that <www-capitalonebank.com> domain name was registered on August 18, 2007.
Complainant established that it had rights in the marks contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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(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 has registered both the CAPITAL ONE mark (e.g., Reg. No. 3,442,400, filed Aug. 26, 2005, registered June 3, 2008), and the CAPITAL ONE BANK mark with the USPTO (e.g., Reg. No. 3,419,972, filed May 17, 2005, registered April 29, 2008). Both marks are used on or in connection with the sale of banking and financial services. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Additionally, the Panel notes that the relevant date to which rights in a registered trademark began is the day the trademark application was filed. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application . . . ”). The Panel also finds that Complainant does not need to register its mark in the country that Respondent operates in. See 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.”). Accordingly, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that the <www-capitalonebank.com> domain name is confusingly similar to both of Complainant’s marks. Complainant notes that the domain name takes advantage of a common misspelling or typographical error and adds the gTLD “.com.” As a general rule, the addition of a gTLD or punctuation-related alterations (such as adding a hyphen) can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Prior panels have established a confusing similarity where the domain name(s) at issue take advantage of common misspellings or typographical errors. Specifically, panels have found that adding “www” to the beginning of the domain name still results in a confusing similarity. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). Thus, the Panel finds that the <www-capitalonebank.com> domain name is confusingly similar to both of Complainant’s marks.
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use Complainant’s marks in domain names. The Panel notes that “Bhadhrika Nirmali Wijendrage” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is void of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant contends that the disputed domain name houses a website displaying a search engine, “Ads” and “related searches.” See Compl., at Attached Ex. C. Complainant then notes that Respondent’s website provides links to other financial institutions, such as Cash Advance and GTSO Hot Stock Alert, including some of Complainant’s competitors. Internet users reach these pages by simply typing in the name of one of Complainant’s competitors in the search engine, or by clicking on any of the “Ads” or “related searches” depicted on the page. See Compl., at Attached Ex. D. Prior panels have found that use of a confusingly similar domain name to host a website containing links to the complainant’s competitors fails to amount to a bona fide offering or a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent does not have rights or legitimate interests under the Policy.
Complainant argues that Respondent is attempting to take advantage of a common typographical error through its use of the disputed domain name. Prior panels have found that the addition of “www-” to the beginning of a domain name that is otherwise identical to the mark at issue constitutes typosquatting and negates the possibility that the respondent could have rights or legitimate interests. See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because respondent's addition of the prefix "www-" to complainant's AMAZON.COM mark constitutes typosquatting.”). As such, the Panel finds that Respondent is typosquatting, and thus it denies Respondent’s rights or legitimate interests under Policy ¶ 4(a)(ii) as well.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. Specifically, Complainant argues that Respondent’s display of hyperlinks to competing services on the resolving webpages is disruptive. The Panel again notes that the disputed domain name houses a website displaying a search engine, “Ads” and “related searches.” See Compl., at Attached Ex. C. Respondent’s website then provides links to other financial institutions, such as “Cash Advance” and “GTSO Hot Stock Alert”, including some of Complainant’s competitors. Internet users reach these pages by simply typing in the name of one of Complainant’s competitors in the search engine, or by clicking on any of the “Ads” or “related searches” depicted on the page. See Compl., at Attached Ex. D. Prior panels have found that use of a confusingly similar domain name to host a website containing links to the complainant’s competitors can consist of bad faith under Policy ¶ 4(b)(iii). 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)). As the Panel finds that Respondent is displaying such links, it finds bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes that Internet users are likely to be confused as to the source or origin of the disputed domain name, and that Respondent must be profiting in some manner by the aforementioned display of competing hyperlinks. Prior panels have found that use of a domain name to display hyperlinks to competing services, and commercially profiting in the process, consists of bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). As the Panel finds that Respondent is displaying hyperlinks to competing services, and that Respondent is commercially profiting from a likelihood of confusion, it finds bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent is attempting to take advantage of a common typographical error through its use of the disputed domain name. Prior panels have found that the addition of “www” to the beginning of a domain name that is otherwise identical to the mark at issue constitutes bad faith typosquatting. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith). Consequently, the Panel finds that Respondent’s typosquatting behavior is further evidence of bad faith under 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 <www-capitalonebank.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 13, 2015
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