WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capitol Federal Savings Bank v. Moniker Privacy Services / Charlie Kalopungi
Case No. D2011-0867
1. The Parties
The Complainant is Capitol Federal Savings Bank of Topeka, Kansas, United States of America represented by Hovey Williams LLP, United States of America.
The Respondents are Moniker Privacy Services and Charlie Kalopungi of Pompano Beach, Florida, United States of America and Seychelles, the Republic of Seychelles, respectively.
2. The Domain Name and Registrar
The disputed domain name <capit0lfederal.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2011. On May 19, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On May 20, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 23, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 26, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 24, 2011.
The Center appointed David Perkins as the sole panelist in this matter on July 1, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.A The Complainant
4.A.1 The Complainant is a Bank headquartered in Kansas, United States of America and has some 45 locations in Kansas and Missouri. It has provided savings and loan services under the CAPITOL FEDERAL mark since 1893, in other words for over 115 years.
The CAPITOL FEDERAL trademark
4.A.2 The Complainant asserts common law trademark rights in the CAPITOL FEDERAL mark, which it says is famous and well known throughout the United States. In support of that assertion the Complainant provides the following evidence.
4.A.3 Prominent use of the CAPITOL FEDERAL mark on the Complainant’s website at “www.capfed.com”.
4.A.4 When “Capitol Federal”, “Capitol Federal Bank” and “Capitol Federal Savings” are typed into search engines, links to the Complainant’s website are at the top of the organic search results. To illustrate this, exhibited are results of searches on Google and Bing. Also exhibited are copies of the Complainant’s social networking pages which feature the CAPITOL FEDERAL mark on Facebook, Twitter, Flickr and YouTube.
4.A.5 An affidavit from the Complainant’s First Vice President and Director of Marketing, Becky Moore, states that the CAPITOL FEDERAL mark has appeared in nationwide television advertising, local printed and radio advertising, online advertising and on building signage. The mark is also used during the course of doing business, for example on statements, business cards and deposit slips. The mark is further used on newsletters, debit cards, ATMs, proprietary sweepstake campaigns, surveys, printed promotional materials and calendars. Ms. Moore exhibits an article from CJOnline.com in March 2011 reporting that the Complainant was praised on NBC’s “Today Show” as an example of a financial institution that has held true to its values and high standards during the most recent economic downturn.
4.A.6 Finally, in addition to its natural reach in the United States, Ms. Moore exhibits from the Complainant’s website its “Bank Anywhere” webpage, which features both its telephone banking and mobile banking (through mobile devices with Internet capabilities) services.
4.B The Respondents
4.B.1 In the absence of a Response, what is known of the Respondents is derived from the Amended Complaint. The First Respondent, Moniker Privacy Services, is a well-known provider of privacy services for domain name registrants. The disputed domain name was registered on July 23, 2010 by the Second Respondent, Charlie Kalopungi of the Seychelles using the First Respondent’s privacy services.
4.B.2 That domain name resolves to a website at “www.capit0lfederal.com” which prominently displays the header
What you need, when you need it”
That website provides links to third parties which provide the same services as the Complainant, namely Checking Accounts, Student Loans, Loans, Home Loans, Money Market Accounts, Home Mortgages and Saving Accounts. Those third parties are competitors of the Complainant and include Bank of America, US Bank, Hillcrest Bank, Commerce Bank and Lending Tree.
4.B.3 The Respondents have been respondents in at least 12 administrative actions under the Policy, in none of which did they file a Response and in all of which the disputed domain name was either transferred to the complainant, or cancelled. This is further addressed in Section 6 below.
5. Parties’ Contentions
Identical or Confusingly Similar
5.A.1 The Complainant’s case is that it has traded in the United States under and by reference to the CAPITOL FEDERAL name and mark since 1893 and that, in the light of the facts and matters relating to usage of that name and mark summarised in Section 4.A above, the mark is a famous and well-known mark in the United States.
5.A.2 Further, the disputed domain name is identical to that mark, save that the letter ”o” in “Capitol” is replaced with a zero in the domain name as “Capit0l”. This, the Complainant says, is plainly confusingly similar to the FEDERAL CAPITOL mark. In support, the Complainant cites the Decisions in Victoria’s Secret v. Zuccarini, NAF Claim No. 95762 and in Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362. In the latter case the disputed domain name was <0xygen.com> with the first character being the number zero. The Complainant was a media company operating a website at <oxygen.com> and had acquired the trademark OXYGEN. Finding in the complainant’s favour the panelist said:
“The substitution of the digit zero for the letter “O” appears calculated to trade on Complainant’s name by exploiting likely mistakes by users when entering the url address.”
In the Victoria’s Secret, supra, certain of the disputed domain names were misspellings of the complainant’s trademarks and/or by adding a letter. These were held not to create a distinct mark but to be confusingly similar to the complainant’s VICTORIA’S SECRET and LANE BRYANT marks.
Rights or Legitimate Interests
5.A.3 The Complainant’s case is that, on the facts, there is nothing to indicate that the Respondents could demonstrate rights or legitimate interests to the disputed domain name under any of the circumstances set out in paragraph 4(c) of the Policy. To the contrary, the Complainant points to use of the disputed domain name to generate click-through revenue from the website to which that domain name resolves by providing links to the Complainant’s competitors (as described in paragraph 4.B.2 above).
Registered and Used in Bad Faith
5.A.4 The Complainant cites a number of decisions under the Policy where such use of a disputed domain name has been held to constitute bad faith under paragraph 4(b)(iv) of the Policy. The cited cases are Daimler Chrysler Corp & another v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070; International Business Publishers, Inc v. The Center for Business Intelligence, LLC, WIPO Case No. D2001-0181; Lifetime Products, Inc v. IQ Management Corporation, WIPO Case No. D2004-0719; Easyjet Airline Company Ltd. v. Andrew Steggles, WIPO Case No. D2000-0024 and Select Medical Corporation v. Frederick Coppola d/b/a MDFC, NAF Claim No. 96307. The disputed domain names in three (3) of those cases resolved to websites providing links to competitors of the complainant trademark owner. In each case, such was held to constitute registration and use in bad faith.
5.A.5 The Complainant also relies upon Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Polygenix Group Co., WIPO Case No. D2000-0162. Finding bad faith under paragraph 4(a)(iii) of the Policy, the panel found that the disputed domain name <veuveclicquot.org> was
“… so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”
Here, the Complainant says that the Respondents cannot claim ignorance of the CAPITOL FEDERAL mark, which is well-known in connection with banking and related services. Further, the Respondents’ registration of the disputed domain name and use of it to generate click-through revenue by linking to the Complainant’s competitors is opportunistic bad faith use of the CAPITOL FEDERAL mark in the same way that was held to constitute bad faith in the Veuve Clicquot, supra.
5.A.6 The Complainant also points to twelve (12) previous decisions against the Respondent Moniker Privacy Services in other cases under the Policy, in two (2) of which the Second Respondent, Charlie Kalopungi was also a Respondent: see, paragraph 4.B.3 above. These the Complainant says, constitute a “pattern of conduct”, such as to demonstrate circumstances falling within paragraph 4(b)(ii) of the Policy.
5.A.7 In that connection, the Complainant cites Société Nationale des Chemins de Fer Francias, SNCF v. Charlie Kalopungi/Moniker Services, WIPO Case No. D201-0160. In that case the Respondents had registered the domain name <senior6sncf.com> which resolved to a website providing links to third party websites relating to the travel industry. The Complainant contends that such domain name with its addition of the word “senior” and the numeral “6” to the complainant’s very well known SNCF trademark is evidence of precisely the same practice of typosquattering as in the instant case. The panel in that case found both confusing similarity under paragraph 4(a)(i) of the Policy and bad faith under paragraph 4(a)(iii) of the Policy.
5.A.8 As still further indicia of the Respondents’ bad faith, the Complainant points to the Respondents’ failure to file a Response; the use by the Second Respondent of a registration in the name of the First Respondent privacy service; and that the file “robots.txt” has been used to block third party access to the archive of the Respondents’ website images which can otherwise be accessed through the Wayback Machine.
As noted, no Response has been filed.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondents’ domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondents’ rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 The Complainant has provided adequate evidence of common law trademark rights in the CAPITOL FEDERAL mark.
6.6. The disputed domain name is identical with that mark but for substitution of the numeral zero for the letter “o” in CAPITOL. It is plainly confusingly similar to the Complainant’s trademark.
Rights or Legitimate Interests
6.7 On the evidence (see, paragraph 4.B.2 above), it is clear that the Respondents cannot establish rights or legitimate interests in the disputed domain name, whether under paragraph 4(c) or otherwise.
Registered and Used in bad Faith
6.8 Again, the evidence is conclusive of bad faith registration and use under paragraph 4(b)(iv) of the Policy. Of the cases cited by the Complainant in paragraph 5.A.4 above, Daimler Chrysler Corp, supra, Easyjet Airline Company Ltd., supra, and Select Medical Corporation, supra are in point. The other two do not assist and, indeed, it appears that International Business Publishers, Inc, supra has been cited in error since the Complaint was refused.
6.9 Société Nationale des Chemins de Fer Francias, SNCF, supra. cited in paragraph 5.A.7, is still further evidence of the Respondents’ bad faith.
6.10 There are also the secondary indicia of bad faith noted in paragraph 5.A.8.
6.11 In all the circumstances, the Panel finds bad faith registration and use under paragraph 4(b)(iv) of the Policy. Although unnecessary for the Decision, the Panel also regards the evidence as satisfying paragraphs 4(b)(ii) and (iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <capit0lfederal.com> be transferred to the Complainant.
Date: 14 July 2011