Capital One Financial Corp. v. Nish Patel
Claim Number: FA1403001549461
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Nish Patel (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dsharebuilder.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2014; the National Arbitration Forum received payment on March 19, 2014.
On March 19, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <dsharebuilder.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dsharebuilder.com. Also on March 20, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
i. Complainant, Capital One Financial Corp., is a major financial institution that offers a broad spectrum of financial products and services to consumers, small businesses, and commercial clients.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SHAREBUILDER mark (e.g., Reg. No. 2,488,464, registered September 11, 2001).
iii. Respondent’s <dsharebuilder.com> domain name is confusingly similar to Complainant’s SHAREBUILDER mark.
i. Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent’s website provides links to other financial institutions.
i. The disputed domain name should be considered as having been registered and being used in bad faith.
ii. Respondent’s website provides links to other financial institutions in an attempt to disrupt Complainant’s business.
iii. Respondent is using the disputed domain name to divert Internet customers seeking Complainant’s website to directory websites and a commercial search engine that displays third-party links to Complainant’s competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant asserts that it is a major financial institution that offers a broad spectrum of financial products and services to consumers, small businesses, and commercial clients. Complainant contends that it is the owner of trademark registrations with the USPTO for the SHAREBUILDER mark (e.g., Reg. No. 2,488,464, registered September 11, 2001). The Panel finds that although Respondent operates out of China, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides and operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has proved rights in the SHAREBUILDER mark pursuant to Policy ¶ 4(a)(i) through its registration with the USPTO. 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.”).
Complainant argues that Respondent’s <dsharebuilder.com> domain name is confusingly similar to Complainant’s SHAREBUILDER mark. The Panel notes that Respondent adds the letter “d” as a prefix to Complainant’s SHAREBUILDER mark in the disputed domain name. The Panel determines that Respondent’s inclusion of an additional letter does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in its disputed domain name. The Panel determines that Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel holds that Respondent’s <dsharebuilder.com> domain name is confusingly similar to Complainant’s SHAREBUILDER mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <dsharebuilder.com> domain name. Complainant states that the WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS record lists “Nish Patel” as the registrant of the disputed domain name. Complainant argues that it has never authorized Respondent to use its SHAREBUILDER mark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant. Consequently, the Panel finds that Respondent is not commonly known under the <dsharebuilder.com> domain name according to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims that Respondent’s website resolving from the <dsharebuilder.com> domain name provides links to other financial institutions. The Panel notes that Respondent uses the disputed domain name to provide links called “American Express Cards,” “USAA Credit Cards,” “America Express,” and others. In Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panel found that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Thus, the Panel finds that Respondent is not using the <dsharebuilder.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant alleges that Respondent’s website provides links to other financial institutions. Complainant contends that Respondent’s <dsharebuilder.com> domain name provides links to American Express, Visa, and MasterCard, all of which are competitors of Complainant. Complainant asserts that this use of the domain name results in a disruption of Complainant’s business. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel concluded that “The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).” Accordingly, the Panel holds that Respondent is using the <dsharebuilder.com> domain name to disrupt Complainant’s business, showing bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent is using the <dsharebuilder.com> domain name to divert Internet customers seeking Complainant’s website to directory websites and a commercial search engine that displays third-party links to Complainant’s competitors. The Panel notes that Respondent’s disputed domain name leads to a website that hosts competing links titled “Pay Your Credit Card Bill,” “Visa Gift Cards & Brands,” “American Express Bank,” and more. Complainant contends that Respondent is benefitting from the goodwill that Complainant has established in its SHAREBUILDER mark. The Panel finds that Respondent’s use of the disputed domain name intentionally attracts Internet users to Respondent’s website by creating a likelihood of confusion, the Panel determines that Respondent has registered and is using the <dsharebuilder.com> domain name in bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <dsharebuilder.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 17, 2014
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