Capital One Financial Corp. v. Mark Williams / Williams2Mark
Claim Number: FA1611001702474
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Mark Williams / Williams2Mark (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <online2capitalone.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2016; the Forum received payment on November 11, 2016.
On November 11, 2016, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the Forum that the <online2capitalone.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@online2capitalone.com. Also on November 14, 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 December 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the CAPITAL ONE mark to identify with its major financial institution that offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients. Complainant has registered CAPITAL ONE with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,989,909, registered July 5, 2011), which demonstrates its rights in the mark. See Compl., at Attached Ex. A, p.26. Respondent’s <online2capitalone.com> is confusingly similar to the CAPITAL ONE mark because it includes the mark completely, less the space, and adds the term “online,” the number “2,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <online2capitalone.com>. Respondent is not commonly known by the disputed domain name or any variant of CAPITAL ONE. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Instead, <online2capitalone.com> resolves to a parked webpage displaying a search engine and directory. See Compl., at Attached Ex. C. The resolving website provides links to Complainant’s own business as well as other financial institutions that compete with Complainant. Id.
Respondent registered and used <online2capitalone.com> in bad faith. While Respondent has included competing links, and a search engine that may be used to access Complainant’s competition—from which Respondent likely profits—Respondent has engaged in conduct proscribed by Policy ¶¶ 4(b)(iii) and (iv).
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <online2capitalone.com>, was registered on July 11, 2016.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid, subsisting, and famous trademark. Complainant has adequately pled its rights and interests in the trademark. Respondent arrives at the disputed domain name by merely adding the generic words “online2” to the beginning of the mark and the g TLD “.com” to the end of the trademark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
Further, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of CAPITAL ONE. The WHOIS information merely lists “Mark Williams / Williams2Mark” as registrant. As such, the Panel finds that Respondent is not commonly known by the disputed domain name.
Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Instead, <online2capitalone.com> allegedly resolves to a parked webpage displaying a search engine and directory. See Compl., at Attached Ex. C. The resolving website provides links to Complainant’s own business as well as other financial institutions that compete with Complainant. See id. (links include, “Capital One Official Site,” “American Express—Savings,” and “Credit Card Offers”). Such actions do not consist of a bona fide or a legitimate noncommercial or fair use.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
Finally, the Panel finds that Respondent registered and used <online2capitalone.com> in bad faith. Complainant contends that while Respondent has included competing links, and a search engine that may be used to access Complainant’s competition (see Compl., at Attached Ex. C)—from which Respondent likely profits—Respondent has engaged in conduct proscribed by Policy ¶¶ 4(b)(iii) and (iv). The Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where the respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors. Further, the Panel notes that in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (FORUM Mar. 21, 2006), it was stated, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”
Accordingly, the Panel finds that Respondent’s actions indicate bad faith use and registration pursuant to Policy ¶¶ 4(b)(iii) and (iv).
In addition, the Panel finds that Respondent proceeded with full knowledge of Complainant’s prior interests in the trademark CAPTIAL ONE. Given the near iconic status of the mark, it is inconceivable that Respondent was not aware of this mark. As such, under the totality of the circumstances, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name with knowledge of Complainant’s prior rights in and to the mark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <online2capitalone.com> domain name be transferred from Respondent to Complainant.
Kenneth L.Port, Panelist
Dated: December 7, 2016
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