Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd
Claim Number: FA1606001677653
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, United States. Respondent is DN Manager / Whois-Privacy.Net Ltd (“Respondent”), Vanuatu.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalonemilerewards.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2016; the Forum received payment on June 2, 2016.
On June 2, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <capitalonemilerewards.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@capitalonemilerewards.com. Also on June 3, 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 Terry F. Peppard as sole Panelist in this proceeding.
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 the marketing of its business in financial services.
Complainant holds a registration for the CAPITAL ONE mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,065,991, registered May 27, 1997, renewed May 27, 2007).
Respondent registered the <capitalonemilerewards.com> domain name on October 16, 2006.
The domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the CAPITAL ONE mark.
Respondent is making neither a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of, the domain name.
The domain resolves to a website at which Respondent attempts to pass itself off as Complainant in an effort to induce Internet users to take a fraudulent survey, presumably so that Respondent can profit commercially.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent’s use of the domain name creates confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with it.
Respondent uses a privacy service to withhold from the public information as to its true identity.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is true 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 does business (here Vanuatu). See, e.g., Advance Auto Parts, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 1625582 (Forum July 23, 2015) (finding a UDRP complainant’s USPTO registration sufficient under Policy ¶ 4(a)(i), notwithstanding that a respondent evidently resided in the Isle of Man).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <capitalonemilerewards.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. The domain name contains the mark in its entirety, less only the space between its terms, and with the addition of the descriptive phrase “mile rewards” and 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 Novell, Inc. v. Taeho Kim, FA 167964 (Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to a UDRP complainant’s 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”).
See also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015):
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.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name <capitalonemilerewards.com>, and that Complainant has not authorized Respondent to use its CAPITAL ONE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “DN Manager / Whois-Privacy.Net Ltd,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015):
The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <capitalonemilerewards.com> domain name to attempt to pass itself off as Complainant thus to induce Internet users to participate in a survey, presumably for Respondent’s commercial benefit. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding, under Policy ¶ 4(c)(i) and ¶ 4(c)(iii), that a respondent’s attempt to pass itself off as a UDRP complainant online, in a blatant unauthorized use of that complainant’s mark, was evidence that that respondent had no rights to or legitimate interests in a disputed domain name); see also Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (finding that, where a disputed domain name resolved to a website that purported to offer Internet users a gift card as compensation for filling out surveys, a respondent’s use of the domain name in that manner was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <capitalonemilerewards.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA1620197 (Forum June 16, 2015) (concluding that “…Respondent’s use of the disputed domain name disrupts Complainant’s business. Respondent provides misleading information about Complainant through the disputed domain name and offers ‘an exclusive reward worth at least $50.00,’ resulting in confusion and disruption. Respondent’s attempts to pass itself off as Complainant to disrupt Complainant’s business…constitutes bad faith registration and use under Policy ¶4(b)(iii).
We are also convinced by the evidence that Respondent employs the disputed <capitalonemilerewards.com> domain name, which is confusingly similar to Complainant’s CAPITAL ONE trademark, to attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in registering and using the domain name. See Capital One Financial Corp. v. Domain Admin / Whois Privacy Corp., FA 1592737 (Forum Jan. 13, 2015) (finding that using a disputed domain name that purported to be sponsored by or affiliated with a UDRP complainant in order to garner commercial gain demonstrated bad faith under Policy ¶ 4(b)(iv)).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <capitalonemilerewards.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 6, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page