Capital One Financial Corporation v. Free Gambling Modules
Claim Number: FA0510000580620
Complainant is Capital One Financial Corporation (“Complainant”), 15000 Capital One Drive, 12072-0300, Richmond, VA 23238. Respondent is Free Gambling Modules (“Respondent”), 1641 NW 79th Avenue, Miami, FL 33126.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitol-one-bowl-betting-college-football-wagering.com>, registered with DomainDiscover.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 19, 2005.
On October 24, 2005, DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <capitol-one-bowl-betting-college-football-wagering.com> domain name is registered with DomainDiscover and that Respondent is the current registrant of the name. DomainDiscover has verified that Respondent is bound by the DomainDiscover registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 25, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 14, 2005 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <capitol-one-bowl-betting-college-football-wagering.com> domain name is confusingly similar to Complainant’s CAPITAL ONE BOWL mark.
2. Respondent does not have any rights or legitimate interests in the <capitol-one-bowl-betting-college-football-wagering.com> domain name.
3. Respondent registered and used the <capitol-one-bowl-betting-college-football-wagering.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Capital One, maintains over 48.9 million customers and managed loans totaling $83 billion, and employs over 13,288 associates worldwide. Complainant offers a range of financial services including the following: credit cards; real estate financing, namely mortgage; installment loans; savings and investments in certificates of deposit and money market funds; and automobile financing. Complainant is also one of the top ten issuers of MasterCard and Visa credit cards in the United States.
Complainant spends hundreds of millions of dollars annually advertising, marketing, and promoting its CAPITAL ONE branded services through a variety of national media, including television, radio, the Internet, direct mail, and print advertisements. In 2003 alone, Complainant spent in excess of $100 million advertising and promoting the CAPITAL ONE mark. Complainant’s spending for 2004 was over $104 million. Complainant is also the major sponsor for the Capital One Bowl, a yearly football tournament sponsored by Complainant since 1991.
Complainant first registered the CAPITAL ONE mark with the U.S. Patent and Trademark Office (“USPTO”) on August 13, 1996 (Reg. No. 2,065,992). Complainant registered the CAPITAL ONE BOWL mark on June 15, 2004 (Reg. No. 2,853,604).
Respondent, Free Gambling Modules, registered the <capitol-one-bowl-betting-college-football-wagering.com> domain name on November 16, 2004. The website associated with the <capitol-one-bowl-betting-college-football-wagering.com> domain name offers college football wagering services, as well as links to gambling sites and “free magazines.”
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 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 (Nat. Arb. 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.”).
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.
Complainant offers its registrations in the CAPITAL ONE and CAPITAL ONE BOWL marks to demonstrate its rights. The Panel accepts Complainant’s trademark registrations as evidence of Complainant’s rights in the CAPITAL ONE and CAPITAL ONE BOWL marks pursuant to the Policy. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The Panel finds Respondent’s <capitol-one-bowl-betting-college-football-wagering.com> domain name is confusingly similar to Complainant’s CAPITAL ONE BOWL mark. The only difference is the misspelling of the word “capital,” the addition of the words “college” and “football,” which describe Complainant’s sponsored event, the words “betting” and “wagering,” which describe Respondent’s business, and hyphens. All together, adding these words and hyphens 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 the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
The Panel finds Policy ¶4(a)(i) is satisfied.
Respondent is appropriating Complainant’s mark to solicit bets for a football game for which Complainant is the chief sponsor and namesake (i.e. the Capital One Bowl). The website also offers links to third-party gambling sites. The Panel finds using Complainant’s mark in a domain name to solicit bets on a football game named after Complainant and to refer Internet users to third-party gambling websites is not a bona fide offering of a good or service pursuant to Policy ¶4(c)(i) or a legitimate or noncommercial fair use pursuant to Policy ¶4(c)(iii). See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
The Panel finds there is nothing in the record, including the WHOIS registration information, that indicates that Respondent is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee 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); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds Policy ¶4(a)(ii) is satisfied.
Respondent has registered the disputed domain name to solicit bets on a football game for which Complainant is the namesake. In addition, the associated website offers links to other gambling sites as well as free magazine giveaways. The Panel infers Respondent is generating revenues through placing bets and referring Internet traffic to the linked websites. Therefore, the Panel finds Respondent has registered and used the disputed domain name in bad faith because it has appropriated Complainant’s mark in a confusingly similar domain name for commercial gain. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds Policy ¶4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitol-one-bowl-betting-college-football-wagering.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: December 5, 2005