Capital One Financial Corp. v. [Unknown Holder]
Claim Number: FA1607001684338
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is [Unknown Holder], whereabouts unknown (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital-onebank.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2016; the Forum received payment on July 19, 2016.
On July 19, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <capital-onebank.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 July 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@capital-onebank.com. Also on July 19, 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 August 1, 2016.
On August 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Beatrice Onica Jarka 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
The Complainant asserts that:
- Under Policy ¶ 4(a)(i)
Complainant has rights in the CAPITAL ONE BANK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,993,436, registered July 12, 2011). Respondent’s <capital-onebank.com> domain name is confusingly similar to the CAPITAL ONE BANK mark because it contains the mark, less the spaces, combined with a hyphen and the generic top-level domain (“gTLD”) “.com.”
- Under Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <capital-onebank.com> domain name because the available WHOIS information identifies “Christopher Ulm” at Registrant and because Respondent is not authorized to use the CAPITAL ONE BANK mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains only an inactive page.
- Under Policy ¶ 4(a)(iii)
Respondent registered the <capital-onebank.com> domain name in bad faith because it did so through the use of a privacy service. Respondent uses the <capital-onebank.com> domain name in bad faith because the resolving website contains only an inactive page.
B. Respondent:
Respondent’s name has been used to register the <capital-onebank.com> domain name without permission. The disputed domain was registered on November 10, 2015.
The Respondent has registered and used in bad faith a domain name which reproduces almost identically the trademark of the Complainant, in the absence of the Complainant’s authorization or any bona fide offer of services or goods.
Preliminary Issue: Identity Theft
Respondent contends that it has been the victim of identity theft. Specifically, on July 28, the Forum received email communications from Respondent stating that “Someone has apparently used my name without my knowledge or permission.” With the exception of Respondent’s emails denying registration the domain name, Respondent has not provided other evidence in support of a claim of stolen identity, but have provided evidences on his efforts of declaring the false identity issue.
The information supplied in that e-mail communication makes the claim of identity theft plausible, and Complainant does not contest this assertion. Accordingly, this Panel finds that it is in the interests of justice that the identity of the Respondent named in the Complaint be redacted from this decision to protect the identity of that person. Therefore, the Respondent in this proceeding will be identified only as “[Unknown Holder].” See Policy ¶ 4(j): “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” See also Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), in which presiding panels omitted respondents’ personal information from their decisions in order to protect named respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to those respondents.
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 claims rights in the CAPITAL ONE BANK mark through its registration with the USPTO (Reg. No. 3,993,436, registered July 12, 2011). Complainant has provided this registration in its Attachment 1 to Exhibit A. As such, the Panel finds that Complainant has rights in the CAPITAL ONE BANK mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).).
Complainant contends that Respondent’s <capital-onebank.com> domain name is confusingly similar to the CAPITAL ONE BANK mark because it contains the mark, less the spaces, combined with a hyphen and the gTLD “.com.” Accordingly, the Panel finds the <capital-onebank.com> domain name confusingly similar to the CAPITAL ONE BANK mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Therefore, the Panel finds that the Complainant has satisfied the requirements of the Policy ¶ 4(a)(i).
The 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 (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.”).
Complainant alleges that Respondent is not commonly known by the <capital-onebank.com> domain name, because the available WHOIS information identifies the Respondent as Registrant and because Respondent is not authorized to use the CAPITAL ONE BANK mark. The Panel finds that Respondent is not commonly known by the <capital-onebank.com> domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant contends that Respondent fails to use the <capital-onebank.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains only an inactive page. Complainant has provided a screenshot to demonstrate this use in its Exhibit C. The Panel finds this evidence sufficient, it agrees that Respondent fails to use the <capital-onebank.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Therefore, the Panel finds that the Complainant has satisfied the requirements of the Policy ¶ 4(a)(ii).
The Panel notes that Complainant makes no arguments regarding Respondent’s bad faith registration or use of the <capital-onebank.com> domain name which are specifically enumerated under Policy ¶ 4(a)(iii). However, panels have found the Policy to be merely illustrative, rather than exhaustive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant maintains that Respondent registered the <capital-onebank.com> domain name in bad faith because it did so through the use of a privacy service, and in doing so withholds 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 Nov. 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, the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, and holds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). The Panel notes in this sense, that the theft of identity claimed by the Respondent is to be considered as strengthening the Respondent’s bad faith intent in concealing its name as the Registrant of the disputed domain name
Complainant urges that Respondent uses the <capital-onebank.com> domain name in bad faith because the resolving website contains only an inactive page. Complainant has provided a screenshot to demonstrate this use in its Exhibit C. The Panel finds this evidence sufficient, and finds that Respondent uses the domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Therefore, the Panel finds that the Complainant has satisfied the requirements of the 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 <capital-onebank.com> domain name be TRANSFERRED from Respondent to Complainant
Beatrice Onica Jarka Panelist
Dated: August 23, 2016
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