Capital One Financial Corp. v. Foster Kwaku Fosu
Claim Number: FA1611001700836
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Foster Kwaku Fosu (“Respondent”), Ghana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalsone.online>, registered with NameCheap, Inc.
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 November 1, 2016; the Forum received payment on November 1, 2016.
On November 1, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <capitalsone.online> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@capitalsone.online. Also on November 2, 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 November 29, 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 is a financial institution offering a broad spectrum of financial products and services to consumers, small businesses and commercial clients.
Complainant has consistently used the CAPITAL ONE mark to promote its goods and services throughout the world.
Complainant holds a registration for the CAPITAL ONE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,442,400, registered June 3, 2008.
Respondent registered the domain name <capitalsone.online> on or about September 5, 2016.
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 in a domain name.
Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain name resolves to a parked webpage featuring links to the official website of Complainant as well as those of several of Complainant’s commercial competitors.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name, presumably done for its commercial gain, confuses and diverts Internet users from Complainant’s website and results in a disruption of Complainant’s business.
Respondent’s registration and use of the domain name are 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 to 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 as 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. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that a UDRP complainant had established rights in its mark sufficient to satisfy Policy ¶ 4(a)(i) through its registration with the USPTO).
This is so 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 Ghana). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <capitalsone.online> domain name is confusingly similar to Complainant’s CAPITAL ONE trademark. The domain name contains the mark in its entirety, with only the omission of the space between its terms and the addition of a pluralizing letter “s” and the generic Top Level Domain (“gTLD”) “.online.” 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that elimination of spaces between the terms of the mark of another and the addition to it of a gTLD do not establish distinctiveness from that mark under Policy ¶ 4(a)(i)).
See also FCOA, LLC v. Domain Admin / Whois Privacy Corp., FA 1619791 (Forum June 23, 2015) (finding the <foresmost.com> domain name confusingly similar to the FOREMOST mark, noting that the domain name “makes a trivial addition to the trademark in the form of addition of the letter, ‘s.’”).
Further, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2014) (finding the <morganstanley.online> domain name confusingly similar to a UDRP complainant’s MORGAN STANLEY mark, noting that “the presence of the “.online” top-level domain extension increases the possibility of consumer confusion”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the 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 (Nat. Arb. Forum Aug. 18, 2006) (finding, under UDRP ¶ 4(a)(ii), that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name 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 (Nat. Arb. 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 several considerations set out in Policy ¶ 4(c), to determine whether there is in it 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,
Respondent has not been commonly known by the <capitalsone.online> domain name, and that Respondent has not been authorized by Complainant to use the CAPITAL ONE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Foster Kwaku Fosu,” which does not resemble the domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding, under Policy ¶ 4(c)(ii), that, because the relevant WHOIS record identified the registrant of a disputed domain name only as “Dale Anderson,” that respondent was not commonly known by the <statefarmforum.com> domain name). See also Navistar International Corp. v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding 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 registration).
We next observe that Complainant asserts, without objection from Respondent, that the <capitalsone.online> domain name resolves to a parked website, which is presumably operated by Respondent for its commercial gain, and which features a search engine and “sponsored listings” for the websites of some of Complainant’s commercial competitors. This use 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 Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 2015) (finding that a respondent failed to provide evidence of a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, a disputed domain name as provided in Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where that respondent used the domain name to host a web page featuring links to websites offering services that competed with those of a UDRP complainant).
The Panel thus 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 <capitalsone.online> 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 registering and using the domain name. See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where a UDRP complainant operated in the computer industry and a respondent used a disputed domain name to offer competing computer industry website links, that respondent disrupted that complainant’s business and therefore registered and used the domain name in bad faith within the contemplation of Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent’s employment of the <capitalsone.online> domain name, which is confusingly similar to Complainant’s CAPITAL ONE trademark, to seek commercial gain by thus causing confusion among Internet users as to the possibility of Complainant’s association with the domain name, provides further proof of Respondent’s bad faith in registering and using the domain name. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (finding that a respondent’s use of a disputed domain name, which was confusingly similar to the mark of a UDRP complainant, to pursue financial gain from the confusion thus caused among Internet users demonstrated bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv)).
The Panel therefore 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 <capitalsone.online> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 29, 2016
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