Capital One Financial Corp. v. John Gould
Claim Number: FA1604001670120
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is John Gould (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cccapitalone.com>, registered with West263 International Limited.
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 Forum electronically on April 12, 2016; the Forum received payment on April 12, 2016. The Complaint was received in both Chinese and English.
On April 12, 2016, West263 International Limited confirmed by e-mail to the Forum that the <cccapitalone.com> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 April 13, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 3, 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@cccapitalone.com. Also on April 13, 2016, the Chinese language 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 May 4, 2016, 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 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
Complainant, Capital One Financial Corp., is a leading financial institution based in Virginia. Complainant has registered CAPITAL ONE with the United States Patent and Trademark Office (“USPTO) (e.g., Reg. No. 1,992,626, registered Aug 13, 1996), which demonstrates its rights in the mark. Respondent’s <cccapitalone.com> domain is confusingly similar to the CAPITAL ONE mark as the Respondent’s domain is simply a misspelling of Complainant’s mark and thus does not adequately distinguish itself from the mark. Similarly, the addition of the generic top-level domain (“gTLD”) “.com” is not relevant to a confusing similarity analysis.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name as evidenced by WHOIS information identifying Respondent as “John Gould.” Further, Respondent’s use of the domain, to divert internet users seeking Complainant’s website to Respondent’s commercial website, is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s bad faith is demonstrated from use of the domain to resolve to a website from which Respondent presumably receives pecuniary gain. This use disrupts Complainant’s business and confuses and attracts internet users for commercial gain. Finally, Respondent failing to use its apparent business name “Hanyu Design” or “Beijing CCI Architectural Design Com Ltd.,” and instead using the CAPITAL ONE mark demonstrates Respondent’s knowledge of Complainant’s rights in the mark.
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 as early as its 1996 USA registration, in connection with the provision of a broad spectrum of banking and financial services.
Respondent is John Gould of Delaware, USA. Respondent’s registrar’s address is listed as Chengdu, China. The Panel notes that the disputed domain name was created on or about Aug. 27, 2015.
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.”).
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant contends that its rights in the CAPITAL ONE mark stem from registration of the mark with the USPTO (e.g., Reg. No. 1,992,626, registered Aug 13, 1996). Prior panels have found that registration of a mark with the USPTO is sufficient to demonstrate its rights in the mark. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). Accordingly, the Panel finds that Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s domain <cccapitalone.com> is confusingly similar to the CAPITAL ONE mark as the domain is a mere misspelling of the mark. Respondent’s domain adds two letters before the mark and the gTLD “.com.” Previous panels have found that a mere misspelling of a mark in a domain name does not prevent a finding of confusing similarity. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant). Past panels have also held that the addition of the gTLD “.com” is not a feature that can distinguish a domain from a mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). The Panel here finds that Respondent’s domain is confusingly similar to the CAPITAL ONE mark.
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), 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 (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 argues that Respondent has not been commonly known by the disputed domain name, authorized to use the CAPITAL ONE mark in any manner, or been a licensee of Complainant. WHOIS information associated with the domain name identifies the Respondent as “John Gould.” Prior panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel here finds that the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent’s use of the domain to divert internet users seeking Complainant’s website to Respondent’s commercial website, is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website that appears to display services related to architectural design. Presumably Respondent receives pecuniary gain from offering of these services. Prior panels have found that using a confusingly similar variant of another’s mark to offer services for gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark). The Panel here finds that Respondent’s use does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As 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 asserts that Respondent’s bad faith is demonstrated from use of the domain to resolve to a website from which Respondent presumably receives pecuniary gain. Complainant believes that Respondent’s apparent commercial offering of design services competes and disrupts its business. Previous panels have held that using a complainant’s mark to offer unrelated services may constitute bad faith disruption under Policy ¶ 4(b)(iii). See Capital One Financial Corp. v. Mai Erne / Hara Partners, FA1617710 (Forum June 12, 2015) (finding that “…since Respondent seems to be attempting to offer its services through a confusingly similar domain name, the Panel agrees that disruption of Complainant’s has occurred and declare Respondent has acted in bad faith under Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent has demonstrated bad faith through disrupting Complainant’s business.
Complainant claims that Respondent’s confusingly similar domain is used to confuse and attract internet users for commercial gain and does so in bad faith. Again, Respondent’s domain closely resembles the CAPITAL ONE mark and resolves to a website that appears to promote a business that provides architectural design services. Past panels have found bad faith where a respondent used a confusingly similar domain in a manner that appears to benefit the respondent in a commercial manner. See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). The Panel here finds that Respondent’s intentional diversion of Internet users for pecuniary gain by using a confusingly similar domain, supports a finding that Respondent registered and used the disputed domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As 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 <cccapitalone.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 18, 2016
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