Capital One Financial Corp. v. Isaac Goldstein
Claim Number: FA1301001478884
Complainant is Capital One Financial Corp. (“Complainant”), represented by Elizabeth Lim Brooks, Virginia, USA. Respondent is Isaac Goldstein (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sharebilder.com>, registered with ENOMAU INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2013; the National Arbitration Forum received payment on January 7, 2013.
On January 7, 2013, ENOMAU INC. confirmed by e-mail to the National Arbitration Forum that the <sharebilder.com> domain name is registered with ENOMAU INC. and that Respondent is the current registrant of the name. ENOMAU INC. has verified that Respondent is bound by the ENOMAU INC. 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 January 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2013 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@sharebilder.com. Also on January 8, 2013, 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 February 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant is a financial institution headquartered in McLean, Virginia that offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients.
Complainant has registered the SHAREBUILDER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,488,646 registered September 11, 2001).
The <sharebilder.com> domain name is confusingly similar to Complainant’s SHAREBUILDER mark.
Complainant’s mark is displayed in Respondent’s domain name as a simple misspelling or typo that an Internet user might make when typing Complainant’s mark. The addition of the generic top-level domain “.com” to a domain name is insufficient to distinguish a disputed domain name and a mark.
Respondent is not commonly known by the <sharebilder.com> domain name.
Complainant has never authorized Respondent to use its SHAREBUILDER mark, much less use the mark as a domain name. Respondent is not a licensee of Complainant.
Respondent uses the <sharebilder.com> domain name to resolve to a website that displays a search engine, “related searches,” and “sponsored listings,” specifically displaying links to financial institutions that compete with Complainant.
Respondent’s use of the disputed domain name results in a disruption of Complainant’s business through the confusion caused by the similarity between Complainant’s SHAREBUILDER mark and the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark registrations for its SHAREBUILDER mark with the USPTO.
Complainant acquired rights in its SHAREBUILDER mark prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark in any capacity.
The at-issue domain name addresses a website that displays search engine, “related searches,” and “sponsored listings,” including links to financial institutions that compete with Complainant.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the SHAREBUILDER mark with the USPTO confers rights in such mark upon Complainant pursuant to Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). It is immaterial for the purposes of establishing rights in a mark under Policy ¶ 4(a)(i) that Respondent may reside or operate outside the jurisdiction in which Complainant’s registered its trademark. 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).
Respondent’s <sharebilder.com> domain name is confusingly similar to Complainant’s SHAREBUILDER mark under Policy ¶ 4(a)(i). Complainant’s mark is contained in the at-issue domain as a simple misspelling or typo that an Internet user might make when typing Complainant’s mark. Indeed, the second level domain name, “sharebilder,” merely omits the letter “u” from Complainant’s mark. Furthermore, it is well settled that the top-level domain name, here “.com,” does nothing to distinguish an at-issue domain name and from an otherwise similar trademark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Isaac Goldstein” as the registrant of the at-issue domain name and there is no evidence before the Panel which suggests that Respondent is nevertheless commonly known by the <sharebilder.com> domain name despite the contrary WHOIS information. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the website addressed by the at-issue domain name to display a search engine, “related searches,” and “sponsored listings,” including links to financial institutions that compete with Complainant. Respondent’s use of the at-issue domain in this manner to display sponsored links to third-party websites, some of which compete with Complainant, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to address Respondent’s website increases the likelihood that visitors intending to visit Complainant will instead be directed to Respondent. Displaying search engine searches and advertisements for services which compete with those offered by Complainant on the <sharebilder.com> website is thus disruptive to Complainant’s business and demonstrates bad faith pursuant Policy ¶4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sharebilder.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 6, 2013
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