Capital One Financial Corp. v. jiangqingping
Claim Number: FA1605001677130
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, United States. Respondent is jiangqingping (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capitelone360.com> and <capitslone360.com>, registered with 22net, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2016; the Forum received payment on May 31, 2016. The Complaint was submitted in both Chinese and English.
On May 31, 2016, 22net, Inc. confirmed by e-mail to the Forum that the <capitelone360.com> and <capitslone360.com> domain names are registered with 22net, Inc. and that Respondent is the current registrant of the names. 22net, Inc. has verified that Respondent is bound by the 22net, 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 June 2, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language 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@capitelone360.com, postmaster@capitslone360.com. Also on June 2, 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 June 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant uses the CAPITAL ONE 360 mark in connection with its business in financial services.
2. Complainant has registered the CAPITAL ONE 360 mark with multiple trademark authorities including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,401,562, registered Sept. 10, 2013), which establishes rights in the mark. See Compl., at Attached Ex. A, p.14. Respondent’s <capitelone360.com> and <capitslone360.com> domain names are confusingly similar to the CAPITAL ONE 360 mark as they incorporate the mark entirely, less the spaces, with the exception of simple typographical errors and the addition of the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <capitelone360.com> and <capitslone360.com> domain names. Respondent is not commonly known by the disputed domain names nor has Complainant authorized Respondent to use the CAPITAL ONE 360 mark. See Compl., at Attached Exs. A-B. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <capitelone360.com> and <capitslone360.com> domain names. Rather, the domain names resolve to websites which display a search engine and sponsored listings which provide links to Complainant’s own business as well as Complainant’s competitors. See Compl., at Attached Exs. C–D.
4. Respondent has registered the <capitelone360.com> and <capitslone360.com> domain names in bad faith. First, Respondent’s use serves as a disruption of 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 names with a privacy service, further evidence of bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDING
The Registration Agreement relating to the domain names 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.
1, Complainant is a prominent United States company engaged in the business of providing financial services.
2. Complainant has registered the CAPITAL ONE 360 mark with multiple trademark authorities including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,401,562, registered Sept. 10, 2013) and has thus established trademark rights in CAPITAL ONE 360.
3. Respondent registered the disputed <capitelone360.com> and <capitslone360.com> domain names on April 5, 2014.
4. The domain names resolve to websites which display a search engine and sponsored listings which provide links to Complainant’s own business as well as Complainant’s competitors.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the CAPITAL ONE 360 mark in connection with its business in financial services. Complainant submits that it has registered the CAPITAL ONE 360 mark with USPTO (e.g., Reg. No. 4,401,562, registered Sept. 10, 2013), and argues that its demonstration of trademark registrations is sufficient in establishing Policy ¶ 4(a)(i) rights in the CAPITAL ONE 360 mark. See Compl., at Attached Ex. A. 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 of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Therefore, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the CAPITAL ONE 360 mark, notwithstanding Respondent’s reported residence in China.
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CAPITAL ONE 360 mark. Complainant argues that Respondent’s <capitelone360.com> and <capitslone360.com> domain names are confusingly similar to the CAPITAL ONE 360 mark as they incorporate the mark entirely, less the spaces, with the exception of simple typographical errors and the addition of the gTLD “.com.” Panels have found that such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Therefore, the Panel finds that Respondent’s <capitelone360.com> and <capitslone360.com> domain names are confusingly similar to the CAPITAL ONE 360 mark under Policy ¶ 4(a)(i).
The Panel also finds that the changes Respondent has made to the CAPITAL ONE 360 mark in articulating the domain names amounts to typosquatting, and further evidence of confusing similarity under Policy ¶ 4(a)(i). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum April 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CAPITAL ONE 360
mark and to use it in its domain names, making only minor spelling changes;
(b) Respondent registered the disputed domain names on April 5, 2014;
(c) The domain names resolve to websites which display a search engine and sponsored listings which provide links to Complainant’s own business as well as Complainant’s competitors;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <capitelone360.com> and <capitslone360.com> domain names. To begin, Complainant submits that Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the CAPITAL ONE 360 mark. The Panel notes Complainant’s Exhibit B, the WHOIS information regarding the disputed domain names, listing “jiangqingping / jiangqingping” as registrant of record. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees that there is no basis to find that Respondent is commonly known by the disputed domain names per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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 AIRLINE mark);
(f) Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <capitelone360.com> and <capitslone360.com domain names. Rather, Complainant contends that the domain names resolve to a webpage displaying a search engine and sponsored listings which provide links to Complainant’s own business as well as competitors. See Compl., at Attached Exs. C-D. Such links include: “American Express Cards,” “Instant Business Loans,” and “Top 10 Credit Cards.” Id. 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, FA1504001613867 (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). Therefore, the Panel agrees that Respondent’s <capitelone360.com> and <capitslone360.com domain names constitute neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that 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 websites which is disrupting Complaint’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) and (iv) because of the inclusion of hyperlinks. See Compl., at Attached Exs. C–D. Such links include: “American Express Cards,” “Instant Business Loans,” and “Top 10 Credit Cards.” Id. Panels have held this type of behavior to constitute bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (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, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Therefore, Panel agrees that Respondent’s <capitelone360.com> and <capitslone360.com> domain names fall within the purview of Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant also argues that Respondent has previously engaged a privacy service at registration, and in doing so withheld identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it finds that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <capitelone360.com> and <capitslone360.com> domain names using the CAPITAL ONE 360 mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitelone360.com> and <capitslone360.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
, Panelist
Dated: June 29, 2016
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