WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Capitol Federal Savings Bank v. Dealwave

Case No. D2011-0870

1. The Parties

Complainant is Capitol Federal Savings Bank of Topeka, Kansas, United States of America, represented by Hovey Williams LLP of Overland Park, Kansas, United States of America.

Respondent is Dealwave of Columbia, Maryland, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wwwcapfed.com> (the “Disputed Domain Name”) is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2011. On May 20, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Disputed Domain Name. On May 23, 2011, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on May 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 24, 2011.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 15, 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

Complainant states that it “has adopted and used the service mark CAPITOL FEDERAL in the United States for over 115 years for use in connection with its savings and loan services” and that it “has exclusively used the CAPITOL FEDERAL trademark to identify the source of its savings and loan services, and has approximately 45 physical locations in Kansas and Missouri.” Complainant further states that it “adopted CAPFED as a shortened version of its name in 1996 for use in connection with banking, credit card processing and related financial services” and that it has used CAPFED on social media networking sites and “in nationwide television advertising, local printed and radio advertising, online advertising, as well as on building signage and in many transactional documents used in the course of doing business, such as statements, business cards, and deposit slips.” Complainant operates a website using the domain name <capfed.com>.

The Disputed Domain Name was created on June 16, 2005.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is identical or confusingly similar to the CAPITOL FEDERAL and/or the CAP FED marks.

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant and its counsel could find no evidence that Respondent has made any bona fide offering of goods or services in connection with CAPFED”; “Respondent is not commonly known by the contested domain name”; “Respondent is using the website at the disputed domain name for the purpose of ‘click throughs’ to other sites”; “Complainant’[s] searches turned up no trademark registrations for CAPFED owned by Respondent” and “Respondent intends to mislead or divert consumers or tarnish the service mark at issue.”

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent “was and is intending to exploit Capitol Federal’s well-known reputation and the goodwill associated with the CAPFED mark. In particular, Respondent has registered a domain name and used it to confuse consumers and mislead them into thinking that its website is an authorized website of the Complainant’[s] through which the public can purchase authentic products or services sold by the Complainant” – including links labeled “Checking Account”; “Student Loans”; “Loans”; “Refinance Home”; “Online Banking”; “Home Loan”; and “Online Bank.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Complainant cites no trademark registrations for either CAPITOL FEDERAL or CAPFED. The Panel has independently identified¹ two relevant pending trademark applications filed by Complainant at the U.S. Patent and Trademark Office:

- Serial No. 85-138,766 for the mark CAPITOL FEDERAL, claiming a first use in commerce date of 1938, for use in connection with, inter alia, “[b]anking, credit card transaction processing, and related financial services.”

- Serial No. 85-138,789 for the mark CAPFED, claiming a first use in commerce date of 1996, for use in connection with, inter alia, “[b]anking, credit card transaction processing, and related financial services.”

Indeed, Complainant refers to its “common law trademark” rights. Accordingly, “[t]he complainant must show that the name [CAPITOL FEDERAL and /or CAPFED] has become a distinctive identifier associated with the complainant or its goods or services.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.7. Ordinarily, this is shown via evidence of “secondary meaning,” such as “length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.” Id.

While Complainant has provided only limited evidence of such secondary meaning, the Panel is persuaded that Complainant has obtained common law trademark rights, based upon an affidavit provided with the Complaint from Becky Moore, Complainant’s first vice president and director of marketing. Among other things, Ms. Moore states that Complainant “has adopted and used the mark CAPITOL FEDERAL… in the United States for over 115 years for use in connection with its savings and loan services” (a statement supported by the first pending trademark application cited above); Complainant “has approximately 45 physical locations in Kansas and Missouri”; Complainant “adopted CAP FED as a shortened version of its name in 1996” (also supported by the second pending trademark application cited above); and Complainant has used CAPFED on social media networking sites and “in nationwide television advertising, local printed and radio advertising, online advertising, as well as on building signage and in many transactional documents used in the course of doing business, such as statements, business cards, and deposit slips” (a statement supported by some supporting documents).

Accordingly, the Panel is convinced that Complainant has rights in and to both the trademarks CAPITOL FEDERAL and CAPFED.

As to whether the Disputed Domain Name is identical or confusingly similar to either of these trademarks, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “wwwcapfed”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose.

Numerous previous decisions under the Policy have found that a domain name consisting of the characters “www” plus a complainant’s trademark is confusingly similar to the trademark given that “www” is merely an abbreviation for “World Wide Web” and is often used as a third-level domain is presenting a uniform resource locator. See, e.g., Pocket Kings Limited v. Owen Webster, WIPO Case No. D2011-0613 (“The inclusion of ‘www’, even without a period between the two terms does not alter how the [remainder of the domain name] will be read by an Internet user. The ‘www’ prefix, as it is normally used, with a period, is an irrelevant consideration when considering whether a domain name is similar to a trademark… and in this instance, even without the period, is an irrelevant consideration.”).

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that, inter alia, “Complainant and its counsel could find no evidence that Respondent has made any bona fide offering of goods or services in connection with CAPFED”; “Respondent is not commonly known by the contested domain name”; “Respondent is using the website at the disputed domain name for the purpose of ‘click throughs’ to other sites”; “Complainants’ searches turned up no trademark registrations for CAPFED owned by Respondent” and “Respondent intends to mislead or divert consumers or tarnish the service mark at issue.”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.

Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy, given that the website used by Respondent in connection with the Disputed Domain Name contains links to various services that are competitive with the services offered by Complainant under its relevant trademarks.

Numerous decisions under the Policy have found bad faith under similar circumstances. As this Panel wrote nearly six years ago:

“‘Paid link farm services,’ sometimes known as ‘monetized parking pages,’ have become an increasingly popular way for domain name registrants to profit from their activity with little effort. In some cases, particularly where the links on such a page are not competitive with or disruptive to a relevant trademark owner, or confusing to visitors, such activity may not violate the Policy. However, where, as here, the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy. See Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430 (‘Respondent is using the disputed domain name to direct visitors to a search engine that provides sponsored links for businesses in the same field as that of the Complainant’).” Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850.

Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy.

7. Decision

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 <wwwcapfed.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Dated: July 28, 2011

¹ “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision” including “referencing of trademark online databases.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5.