Capital One Financial Corp. v. haimin xu
Claim Number: FA1812001819364
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is haimin xu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <www-capitalone.com>, registered with DropCatch.com 357 LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2018; the Forum received payment on December 4, 2018.
On December 4, 2018, DropCatch.com 357 LLC confirmed by e-mail to the Forum that the <www-capitalone.com> domain name is registered with DropCatch.com 357 LLC and that Respondent is the current registrant of the name. DropCatch.com 357 LLC has verified that Respondent is bound by the DropCatch.com 357 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 December 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2018 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@www-capitalone.com. Also on December 6, 2018, 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 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Capital One Financial Corp., is a major financial institution headquartered in McLean, Virginia. Complainant has rights in the CAPITAL ONE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,992,626, registered Aug. 19, 1996). Respondent’s <www-capitalone.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark, as the domain name is a simple misspelling of Complainant’s mark.
Respondent has no rights or legitimate interests in the <www-capitalone.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the CAPITAL ONE mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent offers the disputed domain name for sale. Furthermore, Respondent fails to make an active use of the disputed domain name.
Respondent registered and is using the <www-capitalone.com> domain name in bad faith because Respondent offers the disputed domain name for sale. Furthermore, Respondent registered the disputed domain name under a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <capitalone.com>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.”).
Complainant claims rights in the CAPITAL ONE mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides the registration information for its CAPITAL ONE marks (e.g. Reg. No. 1,992,626, registered Aug. 19, 1996). The Panel finds that Complainant’s registration of the CAPITAL ONE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <www-capitalone.com> domain name is confusingly similar to the CAPITAL ONE mark, as the name in a simple misspelling of Complainant’s mark. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Chegg Inc. v. Company CEO / Qulity Programming, FA 1610061 (Forum Apr. 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) whereas “Respondent’s <chwgg.com> domain name is a simple misspelling of Complainant’s CHEGG.COM mark.”). The Panel finds that the <www-capitalone.com> domain name is confusingly similar to the CAPITAL ONE mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <www-capitalone.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CAPITAL ONE mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as ”haimin xu,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel finds find under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <www-capitalone.com> domain name.
Complainant also asserts Respondent’s inactive holding of the <www-capitalone.com> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name does not resolve to an active webpage. The Panel finds that this is evidence that Respondent does not have rights or legitimate interests in respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts Respondent’s attempts to offer the <www-capitalone.com> domain name for sale further indicates it does not have rights or legitimate interests in the name. A respondent’s offer to sell a domain name to the general public can indicate the respondent lacks rights and legitimate interests in the name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides screenshots indicating the at-issue domain name resolves to a website which purports to offer up the name for sale. The Panel finds based on Complaint’s uncontested allegations and evidence that Respondent lacks rights and legitimate interests in the <www-capitalone.com> domain name per Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant asserts that Respondent’s failure to use the <www-capitalone.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant’s argues that the domain name does not resolve to an active website. The Panel finds that Respondent’s inactive holding of the domain name is evidence of its bad faith per Policy ¶ 4(a)(iii).
Complainant contends Respondent’s only purpose in registering the <www-capitalone.com> domain name was to gain commercially from the sale of the same, indicating its registration and use of the name in bad faith. A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant contends that given its longstanding trademark registration of the CAPITAL ONE mark, and Respondent’s current use of the domain name to offer to sell the name, it is evident Respondent’s purpose for registering and using the domain name was and is to sell the name for a profit. The Panel agrees and finds based on Complainant’s uncontested allegations and evidence that Respondent registered and uses the <www-capitalone.com> domain name in bad faith per Policy ¶ 4(b)(i).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <www-capitalone.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 8, 2019
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