Capital One Financial Corp. v. Zhichao Yang
Claim Number: FA1605001677117
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, United States. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <menardscapitalonecards.com>, registered with NameSilo, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2016; the Forum received payment on May 31, 2016.
On June 1, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <menardscapitalonecards.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 June 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@menardscapitalonecards.com. Also on June 2, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 uses the CAPITAL ONE mark in connection with its business in financial services. Complainant has registered the CAPITAL ONE mark with multiple trademark authorities including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,992,626, registered Aug. 13, 1996), which establishes rights in the mark. Respondent’s <menardscapitalonecards.com> domain name is confusingly similar to the CAPITAL ONE mark as it includes the mark in its entirety and adds the descriptive term “menards,” the generic term “cards,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <menardscapitalonecards.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CAPITAL ONE mark. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <menardscapitalonecards.com> domain name. Rather, the domain name resolves to a webpage displaying a search engine and sponsored listings which provide links to Complainant’s own business as well as Complainant’s competitors.
Respondent is using the <menardscapitalonecards.com> domain name in bad faith. First, Respondent’s use disrupts Complainant’s legitimate business purposes. Second, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Lastly, Respondent has registered the disputed domain name with a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Capital One Financial Corp., uses the CAPITAL ONE mark in connection with its business in financial services. Complainant has rights in the CAPITAL ONE mark through registration with multiple trademark authorities including the USPTO (Reg. No. 1,992,626, registered Aug. 13, 1996). Respondent’s <menardscapitalonecards.com> domain name is confusingly similar to the CAPITAL ONE mark.
Respondent, Zhichao Yang, registered the <menardscapitalonecards.com> domain name on September 10, 2015.
Respondent has no rights or legitimate interests in the <menardscapitalonecards.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CAPITAL ONE mark. Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <menardscapitalonecards.com> domain name. The domain name resolves to a webpage displaying a search engine and sponsored listings which provide links to Complainant’s business and competitors.
Respondent is using the <menardscapitalonecards.com> domain name in bad faith. Respondent’s use disrupts Complainant’s legitimate business purposes. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent has registered the disputed domain name with a privacy service.
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.”).
Complainant has rights in the CAPITAL ONE mark under Policy ¶ 4(a)(i) through registration with multiple trademark authorities including the USPTO. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i), irrespective of a respondent’s country of origin. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights without regard to whether Complainant’s rights in its mark arise from registration in a jurisdiction other than that in which Respondent resides or operates).
Respondent’s <menardscapitalonecards.com> domain name is confusingly similar to the CAPITAL ONE mark under Policy ¶ 4(a)(i) as it includes the mark in its entirety and adds the descriptive term “menards,” the generic term “cards,” and the gTLD “.com.” Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Respondent has no rights or legitimate interests in the
<menardscapitalonecards.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the CAPITAL ONE mark. The WHOIS information for the disputed domain name lists “Domain Administrator / See PrivacyGuardian.org” as registrant. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Further, Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <menardscapitalonecards.com> domain name under Policy ¶¶ 4(c)(i) and (iii). Rather, the domain name resolves to a webpage displaying a search engine and sponsored listings which provide links to Complainant’s own business as well as competitors. Panels have found such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website which disrupts Complaint’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) and (iv) because of the inclusion of hyperlinks. See Health Republic Insurance Company v. Above.com Legal, FA 1622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent registered the disputed domain names with a privacy service, which, in the commercial context, raises a rebuttable presumption of bad faith use and registration. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1583409 (Forum November 24, 2014) (finding that registration of the disputed domain name using a privacy service “[i]n the commercial context…raises the rebuttable presumption of bad faith use and registration…[and] justifies a finding of bad faith registration and use.”). As Respondent did not respond to the Complaint, Respondent failed to rebut the presumption.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <menardscapitalonecards.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 11, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page