Capital One Financial Corp. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1905001842318
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <canpitalone.com>, <capitaldirectbank.com>, <capitaldirectbanking.com>, <capitaldirectone.com>, <capitalonepayments.com>, <capitolbankone.com>, <capitolonedirect.com>, <capitoloneonlinebanking.com>, <cwapitalone.com>, and <cacpitalone.com>, (‘the Domain Names’) registered with Media Elite Holdings Limited.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2019; the Forum received payment on May 9, 2019.
On May 10, 2019, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <canpitalone.com>, <capitaldirectbank.com>, <capitaldirectbanking.com>, <capitaldirectone.com>, <capitalonepayments.com>, <capitolbankone.com>, <capitolonedirect.com>, <capitoloneonlinebanking.com>, <cwapitalone.com>, and <cacpitalone.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 May 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2019 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@canpitalone.com, postmaster@capitaldirectbank.com, postmaster@capitaldirectbanking.com, postmaster@capitaldirectone.com, postmaster@capitalonepayments.com, postmaster@capitolbankone.com, postmaster@capitolonedirect.com, postmaster@capitoloneonlinebanking.com, postmaster@cwapitalone.com, and postmaster@cacpitalone.com. Also on May 10, 2019, 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 June 3, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
On June 4, 2019 the panel issued an Order requesting further information from the Complainant concerning the entity behind the Domain Names. On June 11 the Complainant filed a consequent and additional submission.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions in the Complaint can be summarized as follows:
Complainant was founded in 1988 and is the owner of the trademarks CAPITAL ONE and CAPITAL ONE BANK which are registered around the world including the USA. The Complainant owns capitalone.com.
The Domain Names registered between 2007 and 2009 are confusingly similar to the Complainant’s trademarks either being misspellings or typographical errors or containing the Complainant’s mark and adding generic terms none of which distinguish the Domain Names from the Complainant’s marks.
The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorized by the Complainant. The Respondent has failed to use the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use having used them to resolve to parked pages with advertisements, commercial search engines, sponsored links, third party websites or no content. This is registration and use in bad faith either for intentionally misleading Internet users for commercial gain, disruption of the Complainant’s business or passive holding. The use of a privacy service is a further indication of bad faith.
The Complainant’s contentions in its Additional Submission can be summarized as follows:
The WhoIS information for each of the Domain Names reveals that eight out of ten use the same name servers and one with a different name server has a web site layout and uses terms identical to seven other of the Domain Names and three of those were registered on the same date with Medial Elite Holdings Limited. Four domain names are registered on the same day or the next day and three of those feature this same content. The remaining three domain names were registered in quick succession over a 45 day period, all three were registered with Medial Elite Holdings Limited and one has the same content as previously discussed. All Domain Names have the same registrant details the Respondent which have not been updated since the Complaint.
Three of the Domain Names feature a typo at the beginning of CAPITAL. Three Domain Names combine CAPITAL with ‘Direct’. Three of the Domain Names use the misspelling CAPITOL.
The Respondent has not replied to deny that the Domain Names have all been registered by one entity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant was founded in 1988 and is the owner of the trademarks CAPITAL ONE and CAPITAL ONE BANK which are registered around the world including the USA. The Complainant owns capitalone.com.
The Domain Names were registered between 2007 and 2009. Seven have been used for pay per click links, one has been used to point to a news site and two are passively held.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
PRELIMINARY ISSUE – SAME REGISTRANT
Paragraph 3(c) of the Policy states ‘The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.’ Where the privacy shield is not lifted and the registrant details remain the same for all domain names in the Complaint the Panel can assume common ownership. See Macy’s Retail Holdings, Inc. and its subsidiary Macy’s West Stores, Inc. v. Above.com Domain Privacy, FA1635892) (Forum Oct. 7, 2015) (concluding that “[t]he whois records for the disputed domain names in this proceeding all list Respondent as the registrant…the registrar did not lift its privacy service to change the registrant in the public records...The Panel therefore finds paragraph 3(c) to be satisfied in this case.”). The Respondent has made no contentions that the Domain Names are not in common ownership. Accordingly the Panel is entitled to assume common ownership and, in the circumstances, holds that it is fair and equitable for the Complaint to proceed against all the Domain Names.
Identical or Confusingly Similar
<canpitalone.com>,<cwapitalone.com> and <cacpitalone.com> consist of signs confusingly similar to the Complainant’s CAPITAL ONE mark (registered, inter alia, in the USA for financial services with first use recorded as 1994) adding only an extra single letter and the gTLD .com in each case which does not prevent said confusing similarity.
<capitolbankone.com>, <capitolonedirect.com> and <capitoloneonlinebanking.com> consist of signs confusingly similar to the Complainant’s CAPITAL ONE mark (registered, inter alia, in the USA for financial services with first use recorded as 1994) substituting the second ‘a’ in CAPITAL with an ‘o’ and adding only a descriptive term and the gTLD .com in each case which does not prevent said confusing similarity.
<capitaldirectone.com> and <capitalonepayments.com> are confusingly similar to the Complainant’s CAPITAL ONE mark (registered, inter alia, in the USA for financial services with first use recorded as 1994) containing that mark in its entirety adding only a descriptive term and the gTLD .com in each case which does not prevent said confusing similarity.
<capitaldirectbank.com> consists of a sign confusingly similar to the Complainant’s CAPITAL ONE BANK mark (registered, inter alia, in the USA for financial services with first use recorded as 2007) substituting the generic term ‘direct’ for ‘one’ and adding the gTLD .com which does not prevent said confusing similarity.
<capitaldirectbanking.com> consists of a sign confusingly similar to the Complainant’s CAPITAL ONE BANK mark (registered, inter alia, in the USA for financial services with first use recorded as 2007) substituting the generic term ‘direct’ for ‘one’ and ‘banking’ for ‘bank’ and adding the gTLD .com which does not prevent said confusing similarity.
The Panel agrees that misspellings do not distinguish the Domain Names from the Complainant's trademarks pursuant to the Policy. See Twitch Interactive Inc. v. Zhang qin, FA 1626511 (Forum Aug. 4, 2015).
The addition of generic words to the Complainant’s mark does not prevent confusing similarity between the Domain Names and the Complainant’s marks. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i)).
The gTLD .com does not serve to distinguish the Domain Names from the Complainant’s marks. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Names are confusingly similar to a mark or marks in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks or signs confusingly similar to them. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sep. 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).
The Respondent has used the sites attached to canpital.com, <capitaldirectbank.com>, <capitaldirectbanking.com>, <capitaldirectone.com>, <capitolbankone.com>, <capitoloneonlinebanking.com>, <cwapitalone.com> and <cacpitalone.com> (‘the Third Party Use Domain Names’) to offer third party commercial services not connected with the Complainant. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
<capitalonepayments.com> and <capitolonedirect.com> (‘the Inactive Domains’) have not been used. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i)).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The different combinations used for the Domain Names either misspelling the Complainant’s mark or adding generic terms related to the Complainant’s business show that the Respondent is aware of the Complainant and its business.
In the opinion of the Panelist, the use made of the Third Party Use Domain Names is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web sites or services on them likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to point to competing dealerships not connected with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those third party businesses and was therefore evidence of bad faith and use).
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation or a sign confusingly similar to that mark can be bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <canpitalone.com>, <capitaldirectbank.com>, <capitaldirectbanking.com>, <capitaldirectone.com>, <capitalonepayments.com>, <capitolbankone.com>, <capitolonedirect.com>, <capitoloneonlinebanking.com>, <cwapitalone.com>, and <cacpitalone.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 19, 2019
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