Capital One Financial Corp. v. Egor Artemov
Claim Number: FA1603001668031
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Egor Artemov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonepersonalloansapplyonline.work>, registered with 101domain, 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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2016; the Forum received payment on March 30, 2016.
On March 30, 2016, 101domain, Inc. confirmed by e-mail to the Forum that the <capitalonepersonalloansapplyonline.work> domain name is registered with 101domain, Inc. and that Respondent is the current registrant of the name. 101domain, Inc. has verified that Respondent is bound by the 101domain, 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 March 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2016 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@capitalonepersonalloansapplyonline.work. Also on March 31, 2016, 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.
A timely Response was received and determined to be complete on March 31, 2016.
On April 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the CAPITAL ONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,065,991, registered May 27, 1996). The mark is used in connection with the sale of banking and financial services. The <capitalonepersonalloansapplyonline.work> domain name is confusingly similar to the CAPITAL ONE mark because it contain the entire mark and adds the descriptive phrase “personal loans apply online,” along with the top-level domain (“TLD”) “.work.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain names, nor is Respondent a licensee of Complainant. Respondent does not have rights or legitimate interests because the <capitalonepersonalloansapplyonline.work> domain name is used to offer services that compete directly with those offered by complainant.
Respondent has engaged in bad faith registration and use. Respondent is using the <capitalonepersonalloansapplyonline.work> domain name to offer services that compete with Complainant for commercial gain thus disrupting Complainant’s business.
B. Respondent
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Respondent has submitted that it has cancelled the disputed domain name.
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.
Complainant has registered the CAPITAL ONE mark with the USPTO (e.g., Reg. No. 2,065,991, registered May 27, 1996). The mark is used 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 even when Respondent does not operate in the United States. 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.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant argues that the <capitalonepersonalloansapplyonline.work> domain name is confusingly similar to the CAPITAL ONE mark. Complainant notes that it contains the entire mark and adds the descriptive phrase “personal loans apply online,” along with the TLD “.work,” while eliminating spacing between words of the mark. As a general rule, the addition of the TLD and elimination of spacing does not distinguish a domain name from the mark at issue. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”). Prior panels have also found that the addition of descriptive phrases to a domain name that is otherwise identical to the mark creates a confusing similarity. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
Finally, Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Under the present circumstances, the Panel finds that the disputed domain names are confusingly similar to the CAPITAL ONE mark.
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 <capitalonepersonalloansapplyonline.work> domain name, nor is Respondent in possession of licensing rights that would allow him to use the CAPITAL ONE mark in a domain name. The Panel notes that “Egor Artemov” is listed as the registrant of record for the disputed domain name. The Panel also notes that Respondent has not rebutted this argument.
Therefore, this Panel concludes that Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii) as Complainant has stated its prima facie case under this prong, therefore shifting the burden of proof to Respondent. Respondent makes no contentions with regards to Policy ¶ 4(a)(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 has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by using the <capitalonepersonalloansapplyonline.work> domain name to disrupt Complainant’s business. To support this claim, Complainant asserts that the domain name is being used by Respondent to offer competing services. The Panel’s attention is drawn to Complainant’s Exhibit C, which contains a screenshot of the content of the webpage resolving from the disputed domain name showing an offering of competing financial services. Prior panels have found that attempts to offer competing services constitutes bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Accordingly, this Panel finds bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by using the <capitalonepersonalloansapplyonline.work> domain name in an attempt to commercially profit from a likelihood of confusion. Complainant again notes that Respondent is using this domain name to offer competing services from which Respondent is presumably profiting. The Panel again refers to Complainant’s Exhibit C, which contains a screenshot of the content of the webpage resolving from the <capitalonepersonalloansapplyonline.work> domain name. Prior panels have found that attempts to offer competing services can consist of bad faith under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Under the present circumstances, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to 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 <capitalonepersonalloansapplyonline.work> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: April 24, 2016
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