Capital One Financial Corp. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1608001687640
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capialonebank.com>, <capitaonebank.com>, <capitalonbank.com>, and <captalonebank.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2016; the Forum received payment on August 10, 2016.
On August 10, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <capialonebank.com>, <capitaonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 August 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 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@capialonebank.com, postmaster@capitaonebank.com, postmaster@capitalonbank.com, and postmaster@captalonebank.com. Also on August 12, 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 September 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant has rights in the CAPITAL ONE BANK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,993,433, registered July 12, 2011).[1] Respondent’s <capialonebank.com>, <capitaonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names are each confusingly similar to the CAPITAL ONE BANK mark because each domain is merely a misspelling or typographical error of the mark combined with the “.com” generic top-level domain (“gTLD”).
2. Respondent is not commonly known by the domain names as it has no permission to use the CAPITAL ONE BANK mark and because the WHOIS information identifies “Domain Admin / Private Registrations Aktien Gesellschaft” as Registrant.
3. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <capialonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names each resolve to parked pages containing advertisements, commercial search engines and sponsored links to third party websites while the <capitaonebank.com> domain name redirects to a website containing malware.
4. Respondent uses the domain names in bad faith because the <capialonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names each resolve to parked pages containing advertisements, commercial search engines and sponsored links to third party websites while the <capitaonebank.com> domain name redirects to a website containing malware. Respondent registered the domain names in bad faith because it did so with the use of a privacy service
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CAPITAL ONE BANK mark. Respondent’s domain names are confusingly similar to Complainant’s CAPITAL ONE BANK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <capialonebank.com>, <capitaonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names, and that Respondent registered and uses the domain names 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:
(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 claims rights in the CAPITAL ONE BANK mark through its registration with the USPTO (e.g., Reg. No. 3,993,433, registered July 12, 2011). Complainant has provided this registration, along with those of other related marks. Thus, the Panel finds that Complainant holds rights in the CAPITAL ONE BANK mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant maintains that Respondent’s <capialonebank.com>, <capitaonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names are each confusingly similar to the CAPITAL ONE BANK mark because each domain is merely a misspelling or typographical error of the mark combined with the “.com” gTLD. Because the Panel agrees that the dominant portion of each domain name is merely a misspelling of the CAPITAL ONE BANK, the Panel finds that the domain names are confusingly similar to the mark according to Policy ¶ 4(a)(i). See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); see also 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <capialonebank.com>, <capitaonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the domain names as it has no permission to use the CAPITAL ONE BANK mark and because the WHOIS information identifies “Domain Admin / Private Registrations Aktien Gesellschaft” as Registrant. Accordingly, the Panel finds that Respondent is not commonly known by the <capialonebank.com>, <capitaonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names. 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 AIRLINES mark).
Complainant claims that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <capialonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names each resolve to parked pages containing advertisements, commercial search engines and sponsored links to third-party websites, including competitors of Complainant. Complainant has provided screenshots of each of the resolving websites to demonstrate this use. The Panel finds this evidence sufficient and further finds that Respondent does not use the <capialonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names 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 CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent fails to use the <capitaonebank.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain redirects to a website containing malware. Complainant has provided a screenshot to demonstrate this use. The Panel agrees and finds that Respondent fails 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 Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent uses the <capialonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names in bad faith because each resolves to a parked page containing advertisements, commercial search engines and sponsored links to third party websites, including competitors of Complainant. Complainant has provided screenshots to demonstrate this use. The Panel finds this evidence sufficient; thus the Panel holds that Respondent uses the <capialonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names in bad faith under Policy ¶ 4(b)(iii). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)).
Complainant maintains that Respondent uses the <capitaonebank.com> domain name in bad faith because it redirects to a website containing malware. Complainant has provided a screenshot to demonstrate this use. The Panel finds this evidence sufficient; thus it holds that Respondent uses the domain name in bad faith under Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under 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 <capialonebank.com>, <capitaonebank.com>, <capitalonbank.com>, and <captalonebank.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 16, 2016
[1] The domain names were created on the following dates: <capitaonebank.com>, October 2, 2005; <captalonebank.com>, December 3, 2005; <capitalonbank.com>, December 16, 2005; <capialonebank.com>, January 10, 2006.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page