national arbitration forum

 

DECISION

 

Capital One Financial Corporation v. Chris Cabrera

Claim Number:  FA0511000591389

 

PARTIES

Complainant is Capital One Financial Corporation (“Complainant”), represented by Karen Waller, 1500 Capital One Drive, 12072-0300, Richmond, VA 23238.  Respondent is Chris Cabrera (“Respondent”), 18113 Bromley Street, Tarzana, CA 91356.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <capitalonebowltickets.com>, registered with Go Daddy Software, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 4, 2005.

 

On November 4, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <capitalonebowltickets.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 November 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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 postmaster@capitalonebowltickets.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 5, 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 that 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <capitalonebowltickets.com> domain name is confusingly similar to Complainant’s CAPITAL ONE BOWL and CAPITAL ONE marks.

 

2.      Respondent does not have any rights or legitimate interests in the <capitalonebowltickets.com> domain name.

 

3.      Respondent registered and used the <capitalonebowltickets.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Capital One Financial Corporation, offers a range of financial services in connection with the CAPITAL ONE mark, including the following: credit cards; real estate financing, namely mortgage lending and home equity loans; installment loans; savings and investments in certificates of deposit and money market funds; and automobile financing.  Complainant is one of the top ten issuers of MasterCard and Visa credit cards in the United States.

 

Complainant offers its U.S. Patent and Trademark Office (“USPTO”) registrations for the CAPITAL ONE mark, registered on May, 27 1997 (Reg. No. 2,065,992), and CAPITAL ONE BOWL mark, registered on June 15, 2004 (Reg. No. 2,853,604) and filed on February 7, 2003.

 

Respondent, Chris Cabrera, registered the <capitalonebowltickets.com> domain name on December 8, 2003.  Respondent is not an authorized vendor of Capital One Bowl tickets.  The website associated with Respondent’s domain name sells tickets not only to Complainant’s sponsored event but also to other sporting and entertainment events.  The text on the website reads as follows:

 

capitalonebowltickets.com is a ticket broker in the business of obtaining hard-to-get and premium tickets for worldwide, national and local events. The term Capiltal [sic] One Bowl as well as all associated graphics, logos, and/or other tradermarks [sic], tradenames or copyrights are the property of the Capiltal [sic] One Bowl and are used herein for factual descriptive purposes only. We are in no way associated with or authorized by the Capiltal [sic] One Bowl and neither that entity nor any of its affiliates have licensed or endorsed us to sell tickets, goods and or services in conjunction with their events. We are not affiliated with the Capiltal [sic] One Bowl.

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel accepts Complainant’s USPTO registration for CAPITAL ONE BOWL as evidence of Complainant’s rights in the mark.  Although the June 15, 2004 trademark registration date post-dates the December 8, 2003 registration of the domain name, the Panel finds that Complainant’s rights date back at least to the trademark filing date, which is February 7, 2003.  Therefore, the Panel finds Complainant has established rights pursuant to Policy ¶4(a)(i).  See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶4(a)(i) dates back to Complainant’s filing date.”).

 

In addition, Complainant has offered other registrations for the CAPITAL ONE mark, including one registered on May 27, 1997.  The Panel finds this also evidences rights pursuant to Policy ¶4(a)(i).  See 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.”); 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.”).

 

The Panel finds the <capitalonebowltickets.com> domain name is confusingly similar to Complainant’s CAPITAL ONE BOWL mark.  The only difference is the addition of the word “tickets,” which does not significantly distinguish the domain name from the mark.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

 

Complainant has established Policy ¶4(a)(i).

 

Rights or Legitimate Interests

 

Respondent is not an authorized vendor of Capital One Bowl tickets.  The website associated with Respondent’s domain name sells tickets not only to Complainant’s sponsored event but also to other sporting and entertainment events.  The Panel finds that using Complainant’s mark to sell tickets to other sporting and entertainment events is neither a bona fide offering of a good or service pursuant to Policy ¶4(c)(i) nor a legitimate non commercial or fair use pursuant to Policy ¶4(c)(iii).  See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i)); Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

There is nothing in the record, including the WHOIS registration information, which 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).

 

Complainant has established Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain name to sell tickets to Complainant’s sporting events as well as other sporting and entertainment events.  The Panel finds appropriating Complainant’s mark to sell tickets, without authorization, to third party events is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).

 

The Panel also finds Respondent’s poorly spelled disclaimer does not mitigate Respondent’s bad faith.  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); NY Times Co. v. NY Internet Servs., D2000-1072 (WIPO Dec. 5, 2001) ( “Disclaimers and links directly to the authorized site do not mitigate matters. The misdirected searcher is immediately confronted with advertising that has nothing to do with The New York Times.”).

 

Complainant has established Policy ¶4(a)(iii).

 

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 <capitalonebowltickets.com> domain name be TRANSFERRED from Respondent to Complainant.

  

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated:  December 19, 2005