DECISION

Capital One Financial Corporation and Capital One Bank v. Austin Howel

Claim Number:  FA0406000289304

PARTIES

Complainant is Capital One Financial Corporation and Capital One Bank (“Complainant”), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC, 20005.  Respondent is Austin Howel (“Respondent”), 1520 Hammersly Avenue, Bronx, NY, 10469.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <capitalonebank.biz>, registered with Network Solutions Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically June 24, 2004; the Forum received a hard copy of the Complaint June 25, 2004.

On June 25, 2004, Network Solutions Inc. confirmed by e-mail to the Forum that the domain name <capitalonebank.biz> is registered with Network Solutions Inc. and that Respondent is the current registrant of the name. Network Solutions Inc. verified that Respondent is bound by the Network Solutions Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 19, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@capitalonebank.biz by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 28, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PRELIMINARY ISSUE

There are two named Complainants in this case:  Capital One Financial Corporation (“COFC”) and Capital One Bank (“COB”).  Rule 3(a) states: “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The Panel has been asked to rule on the question of whether Complainants can be considered as one entity for the purposes of this Complaint. A fair reading of the language of the rule suggests that a Complainant must be one entity. However, two Complainants may be permitted to submit a single Complaint where they demonstrate a link between themselves such as a relationship involving a license, a partnership or an affiliation that would tend to establish the reason for the parties’ bringing a Complaint as one entity.  Here, Complainant COB is a wholly owned subsidiary of COFC.  In these circumstances, the Panel finds that COFC and COB established a sufficient link between them to be treated as one entity for the purposes of this Complaint.  See See Int’l Olympic Committee v. Boyden, FA 201977 (Nat. Arb. Forum Dec. 19, 2003) (“It is permissible for two Complainants to submit a single Complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the Complaint as one entity.”).  

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <capitalonebank.biz>, is confusingly similar to Complainant’s CAPITAL ONE mark.

2. Respondent has no rights to or legitimate interests in the <capitalonebank.biz> domain name.

3. Respondent registered and used the <capitalonebank.biz> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Capital One, is one of the nation’s leading and best known financial institutions.  Complainant offers a range of financial services in connection with the CAPITAL ONE mark, including credit cards, real estate financing, installment loans, savings and investments in certificates of deposit and money market funds, and automobile financing.  Complainant maintains over 47 million customers, manages loans totaling $70.2 billion, and employs over 17,000 associates worldwide.

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the CAPITAL ONE mark (Reg. No. 2,065,992 issued May 27, 1997, Reg. No. 1,992,626 issued August 13, 1996, Reg. No. 2,065,991 issued May 27, 1997 and Reg. No. 2,727,453 issued June 17, 2003).  Complainant has been using the CAPITAL ONE mark since as early as October 1994.

Complainant’s main website, which provides real-time account servicing and information on Complainant and its various products and services, can be accessed at the <capitalone.com> domain name.

Respondent registered the disputed domain name, <capitalonebank.biz>, March 23, 2004, and is using the domain name in connection with an Internet “phishing” scam, a practice that is intended to defraud consumers into revealing personal and proprietary information.  Respondent’s website included numerous copied images from Complainant’s website requesting information from Complainant’s customers.    Respondent’s website also contained links to Complainant’s website.  Currently, the domain name is being used to display the Anti-Phishing Working Group’s website.

DISCUSSION

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."

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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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.

Identical to and/or Confusingly Similar

Complainant established using extrinsic proof in this proceeding that it has rights in the CAPITAL ONE mark through registration with the United States Patent and Trademark Office and through continued use of its mark in commerce over the last ten years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.).

Complainant alleges that the <capitalonebank.biz> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.  The only differences are the additions of the term “bank” and the generic top-level domain (“gTLD”), “.biz,” which do not significantly distinguish the domain name from the mark.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the CAPITAL ONE mark.  Complainant alleges that Respondent has no such rights to or legitimate interests in the domain name that contains in its entirety Complainant’s protected mark.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name because the burden shifts to Respondent to show such rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

In addition, the domain name registered by Respondent, <capitalonebank.biz>, is confusingly similar to Complainant’s mark and it is being used to redirect Internet users to a website that imitates Complainant’s credit application website and is being used to fraudently acquire personal information from Complainant’s clients.  Respondent’s use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where Respondent copied Complainant’s website in order to steal account information from Complainant’s customers, that Respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).

Furthermore, nothing in the record establishes that Respondent is commonly known by the <capitalonebank.biz> domain name.  Respondent is not licensed or authorized to register or use a domain name that incorporates Complainant’s CAPITAL ONE mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the domain name in bad faith.  The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently acquire personal information from Complainant’s clients.  Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website). 

Further, Respondent presumably benefits commercially from using a domain name that is confusingly similar to Complainant’s mark.  Such gain also supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because it creates a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of the website.  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.  Accordingly, it is Ordered that the <capitalonebank.biz> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: August 11, 2004

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