Capital One Financial Corp. v. Ryan G Foo / PPA Media Services
Claim Number: FA1609001694272
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cappitalonebank.com>, <capitalomebank.com>, <capittalonebank.com>, <capitalonebabk.com>, <ccapitalonebank.com>, <capitilonebank.com>, <capitalonebanc.com>, <caitalonebank.com>, <capitzalonebank.com>, and <capitaloneban.com>, registered with Internet Domain Service BS Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2016; the Forum received payment on September 19, 2016.
On September 27, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <cappitalonebank.com>, <capitalomebank.com>, <capittalonebank.com>, <capitalonebabk.com>, <ccapitalonebank.com>, <capitilonebank.com>, <capitalonebanc.com>, <caitalonebank.com>, <capitzalonebank.com>, and <capitaloneban.com> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 September 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@cappitalonebank.com, postmaster@capitalomebank.com, postmaster@capittalonebank.com, postmaster@capitalonebabk.com, postmaster@ccapitalonebank.com, postmaster@capitilonebank.com, postmaster@capitalonebanc.com, postmaster@caitalonebank.com, postmaster@capitzalonebank.com, and postmaster@capitaloneban.com. Also on September 23, 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 October 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 operates in the financial services industry. In furtherance of its business, it has registered the CAPITAL ONE BANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,419,972, filed May 17, 2005, registered Apr. 29, 2008), demonstrating rights therein. Respondent’s <cappitalonebank.com>, <capitalomebank.com>, <capittalonebank.com>, <capitalonebabk.com>, <ccapitalonebank.com>, <capitilonebank.com>, <capitalonebanc.com>, <caitalonebank.com>, <capitzalonebank.com>, and <capitaloneban.com> are confusingly similar to the CAPITAL ONE BANK mark because they each incorporate a misspelled version of the entire mark, while eliminating spacing between words, and adding the “.com” generic top-level domain (“gTLD”).
2. Respondent lacks rights and legitimate interests in <cappitalonebank.com>, <capitalomebank.com>, <capittalonebank.com>, <capitalonebabk.com>, <ccapitalonebank.com>, <capitilonebank.com>, <capitalonebanc.com>, <caitalonebank.com>, <capitzalonebank.com>, and <capitaloneban.com>. Respondent is not a licensee of Complainant and is not otherwise commonly known by the domain names. In addition, Respondent has failed to use all the domain names at issue in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, they resolve or redirect to pages featuring advertisements, directory websites, and commercial search engines that display third-party links to Complainant’s competitors. See Compl., at Attached Ex. C.
3. Respondent registered and used all at-issue domain names in bad faith. Respondent’s competitive use disrupts Complainant’s business—and at the same time attracts Internet users to its own websites for commercial gain. In addition, Respondent registered the domain names with a privacy service.
B. Respondent
1. Respondent did not submit a Response.
1. Respondent’s <cappitalonebank.com>, <capitalomebank.com>, <capittalonebank.com>, <capitalonebabk.com>, <ccapitalonebank.com>, <capitilonebank.com>, <capitalonebanc.com>, <caitalonebank.com>, <capitzalonebank.com>, <capitaloneban.com> domain names are confusingly similar to Complainant’s CAPITAL ONE BANK mark.
2. Respondent does not have any rights or legitimate interests in the <cappitalonebank.com>, <capitalomebank.com>, <capittalonebank.com>, <capitalonebabk.com>, <ccapitalonebank.com>, <capitilonebank.com>, <capitalonebanc.com>, <caitalonebank.com>, <capitzalonebank.com>, <capitaloneban.com> domain names.
3. Respondent registered or used the <cappitalonebank.com>, <capitalomebank.com>, <capittalonebank.com>, <capitalonebabk.com>, <ccapitalonebank.com>, <capitilonebank.com>, <capitalonebanc.com>, <caitalonebank.com>, <capitzalonebank.com>, <capitaloneban.com> 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 operates in the financial services industry. In furtherance of its business, it has registered the CAPITAL ONE BANK mark with the USPTO (Reg. No. 3,419,972, filed May 17, 2005, registered Apr. 29, 2008). Rights exist in a mark where a valid registration exists with the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Furthermore, such rights date back to the registration’s filing date of record. See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the Feb. 20, 2003 filing date with the USPTO as the trademark application was ultimately successful). Accordingly, this Panel agrees that Complainant has satisfied its Policy ¶ 4(a)(i) burden of establishing rights in the CAPITAL ONE BANK mark, and that such rights date back to the mark’s filing date of May 17, 2005.
Next, Complainant argues that Respondent’s <cappitalonebank.com>, <capitalomebank.com>, <capittalonebank.com>, <capitalonebabk.com>, <ccapitalonebank.com>, <capitilonebank.com>, <capitalonebanc.com>, <caitalonebank.com>, <capitzalonebank.com>, and <capitaloneban.com> are confusingly similar to the CAPITAL ONE BANK mark because they each incorporate a misspelled version of the entire mark, while eliminating spacing between words, and adding the “.com” gTLD. Minor misspellings of a mark (adding a letter, removing a letter, phonetic similarity, etc.) are considered insignificant in a Policy ¶ 4(a)(i) analysis. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). Further, removing spaces and adding “.com” is irrelevant to such an analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name <americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel sees the disputed domain names as confusingly similar to the CAPITAL ONE BANK mark under Policy ¶ 4(a)(i).
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 argues that Respondent lacks rights and legitimate interests in <cappitalonebank.com>, <capitalomebank.com>, <capittalonebank.com>, <capitalonebabk.com>, <ccapitalonebank.com>, <capitilonebank.com>, <capitalonebanc.com>, <caitalonebank.com>, <capitzalonebank.com>, and <capitaloneban.com>. First, Complainant contends that Respondent is not a licensee of Complainant and is not otherwise commonly known by the domain names. The WHOIS lists “Ryan G Foo / PPA Media Services” as registrant, and Respondent has not submitted any response to Complainant’s allegations. In Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Similarly, the Panel here agrees that all information in the available record does not give any indication that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
In addition, Complainant urges Respondent has failed to use all the domain names at issue in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, they resolve or redirect to pages featuring advertisements, directory websites, and commercial search engines that display third-party links to Complainant’s competitors. See Compl., at Attached Ex. C. It looks like the first page is a car sales website, to which some of the domain names presumably redirect. Id. The other included screenshots include competitive hyperlinks like “Online Banking,” “Credit Card Online Banking,” and “Business Banking,” to name a few. Id. Panels have agreed that either related or unrelated use by a respondent fails Policy ¶¶ 4(c)(i) and (iii). See 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).”); see also Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Therefore, the Panel agrees that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent registered and used all at-issue domain names in bad faith. Namely, Complainant claims that Respondent’s competitive use disrupts Complainant’s business—and at the same time attracts Internet users to its own websites for commercial gain. The record reflects that some of the disputed domains resolve to pages with a number of hyperlinks that may compete with Complainant. See Compl., at Attached Ex. C. Competing use is seen as disruptive under Policy ¶ 4(b)(iii). 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).”). In addition, either related or unrelated commercial use can be considered an attempt for financial gain as proscribed by Policy ¶ 4(b)(iv). See generally DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Therefore, the Panel finds that Respondent has registered and used all disputed domain names to disrupt the business of Complainant and/or to commercially gain from the confusion associated with Complainant’s mark under both Policy ¶¶ 4(b)(iii) and (iv).
The Panel notes that Respondent has engaged 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 Sept. 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 that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Accordingly, it is Ordered that the <cappitalonebank.com>, <capitalomebank.com>, <capittalonebank.com>, <capitalonebabk.com>, <ccapitalonebank.com>, <capitilonebank.com>, <capitalonebanc.com>, <caitalonebank.com>, <capitzalonebank.com>, and <capitaloneban.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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