Capital One Financial Corp. v. Dan Pham
Claim Number: FA1504001615037
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Dan Pham (“Respondent”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <businesscapitalone.com>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 17, 2015; the Forum received payment on April 17, 2015.
On April 17, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <businesscapitalone.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 April 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2015 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@businesscapitalone.com. Also on April 22, 2015, 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.
A timely Response was received and determined to be complete on May 12, 2015.
On May 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <businesscapitalone.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark.
2. Respondent does not have any rights or legitimate interests in the <businesscapitalone.com> domain name.
3. Respondent registered and uses the <businesscapitalone.com> domain name in bad faith.
B. Respondent
1. Respondent uses the <businesscapitalone.com> domain name
to promote its financial services business.
2. Respondent did not register the <businesscapitalone.com> domain name in bad faith.
Complainant uses the CAPITAL ONE mark in connection with its financial services business, and holds registrations for the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,992,626, Registered August 13, 1996).
Respondent registered the <businesscapitalone.com> domain name on March 20, 2014, and uses it to direct Internet users to his competing financial services site.
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.
The Panel finds that Complainant’s USPTO registration for its CAPITAL ONE mark is sufficient to establish rights under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <businesscapitalone.com> domain name incorporates Complainant’s CAPITAL ONE mark in its entirety and merely adds the descriptive term “business” and the generic top-level domain (“gTLD”) “.com.” Prior panels have found that such alterations to a mark do not distinguish the disputed domain name from the mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Therefore, this Panel finds that Respondent’s businesscapitalone.com> domain name is confusingly similar to the CAPITAL ONE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent has no rights or legitimate interests in the <businesscapitalone.com> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name, and states that it has not authorized Respondent to register its CAPITAL ONE mark in a domain name. The Panel notes that “Dan Pham” is listed as the registrant of the disputed domain name. Respondent claims that its business name is Business Capital, and that it has operated under the disputed domain name for over one year. Respondent has not provided any evidence of the conduct of its business under any name, and therefore the Panel finds that Respondent has not proven that it is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Further, Complainant argues that Respondent is not using the <businesscapitalone.com> domain name in connection with any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Rather, the resolving website features competing click-through links from which Respondent presumably gains click-through revenue. The Panel notes that the website resolving from the disputed domain name includes links such as “Hotel Business Loans”, “Loan Process”, and “Business Acquisition Loans.” Competing with Complainant does not demonstrate a bona fide offering of goods or services. Previous panels have consistently found that a respondent’s use of a disputed domain name for hyperlinks that competed with complainant’s business does not constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent has failed to show a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii).
Further, Complainant alleges that Respondent’s <businesscapitalone.com> domain name constitutes “passing off” under Policy ¶ 4(a)(ii). Complainant argues that Respondent uses the CAPITAL ONE mark to provide unverified information about Complainant and its services. However, Complainant provides no information as to how Respondent is specifically passing itself off as Complainant. Therefore, the Panel declines to find passing off under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is disrupting Complainant’s business by featuring links to Complainant’s competitors at <businesscapitalone.com>. The Panel agrees and finds bad faith bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant also contends that Respondent is attempting to profit from the goodwill associated with the CAPITAL ONE mark and from the confusion of Internet users as to the source, sponsorship, or affiliation with Complainant. The panel, in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website featuring links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes for commercial gain. The Panel likewise finds bad faith under Policy ¶ 4(b)(iv).
The Panel also finds that Respondent knew of Complainant and its rights in the CAPITAL ONE mark, as Complainant states in his sworn Affidavit that he did not believe that his business would be associated with Capital One. This argument is disingenuous, particularly when the disputed domain name is used for direct competition with Complainant. It does not matter if Respondent alleges that he didn’t think the disputed domain name would cause confusion; The Panel finds that he knowingly registered a domain name containing Complainant’s mark, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <businesscapitalone.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 26, 2015
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