Capital One Financial Corp. v. David Brodsky
Claim Number: FA1706001737097
Complainant is Capital One Financial Corp. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is David Brodsky (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital1solutions.com> (the “Disputed Domain Name”), 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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2017; the Forum received payment on June 23, 2017.
On June 26, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capital1solutions.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 June 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2017 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@capital1solutions.com. Also on June 26, 2017, 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 July 17, 2017.
Complainant’s Additional Submission was received and determined to be in compliance with FORUM’s Supplemental Rule 7 on July 24, 2017.
On July 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg 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
Complainant states that it “is a major financial institution” that “was founded in 1988 and helped pioneer the mass marketing of credit cards in the early 1990s.” Complainant further states that it “offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients.”
Complainant states, and provides evidence to support, that it “either directly or via one of its wholly-owned subsidiaries, owns over 100 pending applications or registrations for the CAPITAL ONE mark all over the world and in the United States.” These marks include U.S. Reg. No. 1,992,626 (registered August 13, 1996) for CAPITAL ONE for use in connection with, inter alia, “financial services.” These trademarks are referred to herein as the “CAPITAL ONE Trademark.”
Complainant states, and provides evidence to support, that the Disputed Domain Name was registered on July 18, 2013, and is being used in connection with “a website (purportedly) providing services that closely relate to and overlap with those of Complainant,” which Complainant also describes as a “website seeking to provide vaguely identified ‘business analysis’ and “’consulting’ services.”
Complainant states, and provides evidence to support, that the Disputed Domain Name was previously protected by a “privacy shield,” that Complainant sent a letter to Respondent (when the privacy shield was still in place) about the Disputed Domain Name on December 22, 2016, but did not receive a response; that Complainant sent a letter to Respondent (after learning of Respondent’s identity) about the Disputed Domain Name on April 27, 2017, in response to which Respondent sent an email on the same date stating, inter alia, “there is absolutely no intent to misrepresent, create confusion, retain any benefit, or create collusion by capital1solutions.com from (of) Capital One” and further stating that Respondent may “consider selling our domain name capital1solutions.com at a reasonable price.”
Complaint contends, in relevant part, as follows:
· The Disputed Domain Name is confusingly similar to the CAPITAL ONE Trademark because, inter alia, the Disputed Domain Name “contains Complainant’s mark in its entirety, but changes the word ‘one’ into the number and simply adds the generic term ‘solutions’,” which “directly relates to Complainant’s business” and is “insufficient to distinguish a disputed domain name and a mark.”
· Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not commonly known by the disputed domain name” given that “Registrant’s name is ‘David Brodsky’”; “Complainant has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant”; Respondent’s “website (purportedly) providing services that closely relate to and overlap with those of Complainant… is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”; and “Respondent’s willingness to sell his disputed domain name to Complainant establishes Respondent’s lack of rights and legitimate interests in the domain name.”
· The Disputed Domain Name was registered and is being used in bad faith because, inter alia, the Disputed Domain Name “houses a website seeking to provide vaguely identified ‘business analysis’ and ‘consulting’ services that is used “to divert Internet customers seeking Complainant’s website to Respondent’s (purported) business,” which “results in a disruption of Complainant’s business and intentionally attracts Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.”
B. Respondent
Respondent contends, in relevant part, as follows:
· Respondent has rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, the Disputed Domain Name “is owned by David Brodsky who individually and under the DBA Capital One Solutions from May 2011 provides business analysis and business consulting services, the scope of these services are clearly depicted on the web pages of the disputed domain name”; “there is no competition between the Complainant and the Respondent” because “Respondent is not a financial institution, not involved in the business of credit cards, not provides financial advice, does not benefit from Complainant mark, does not redirect any traffic from the disputed domain name to the competition of the Complainant, and did not have any intent to sell the disputed domain name to the Complainant”; “[n]evertheless, to avoid any further confusion or misinterpretation, changes to the disputed domain name pages have been made as to indicate on each page the following disclaimer: ‘NOT AFFILIATED WITH Capital One, Capital One Bank, or its subsidiaries’”; “Respondent provides business analysis and consulting services to small and medium size companies from 2011 and uses the disputed domain name as informative portal for potential clients”; and Respondent “acquired a DBA registration under the name of Capital One Solutions with Office of Stan Stanart, County Clerk, Harris Count[y], Texas under the number R195109.”
· The Disputed Domain Name was not registered and is not being used in bad faith because, inter alia, Respondent “has been in the consulting industry for over 20 years,” which “clearly demonstrates that the Respondent did not have malicious or exploitative intent directed at the Complainant or its trademark at the time of registration of the domain name”; “Respondent has registered the disputed domain name for its own business activities which do not conflict with the Complainant’s activities and the Respondent has never been engaged in selling any other domain names in the past”; Respondent only offered to sell the Disputed Domain Name to Complainant “for negotiating a settlement dealing with the disputed domain name due to the fact that the Complainant has begun to expand its activities”; and “[t]here is not confusion with the Complainant’s marks and activities described on the disputed domain name, as the Respondent clearly provides other services and for different auditorium.”
Further, Respondent has made a request for a finding of reverse domain name hijacking because, inter alia, “[f]or over three years the Respondent knew or through its multiple representatives should have known that the disputed domain name exists, but has not made any attempted to contact the Respondent”; and “Respondent clearly has legitimate interests in the disputed domain name because consulting services and business analysis are completely different from financial services, credit card services, or banking.”
C. Additional Submission
In its additional submission, Complainant contends, in relevant part, as follows: “Even if Mr. Brodsky were somehow commonly known as the accused domain (and the evidence establishes he is not), he still has no legitimate interests in <capital1solutions.com>” because “[s]imply filling out a DBA form at the local county clerk’s office does not establish legitimate rights”; “Respondent’s argument regarding differences in the respective services is without merit” because “even though Capital One believes financial services offered to businesses to be closely related to business analysis and consulting, for the purposes of a UDRP complaint, it is clear that at least some of Capital One’s services directly overlap with those allegedly offered by Respondent”; “Respondent’s true intentions are revealed by Mr. Brodsky’s LinkedIn page where he lists Capital One Solutions as part of his work history, but indicates that Capital One Solutions is in fact Capital One by including Capital One’s design mark in connection with the words ‘Capital One Solutions’”; and “Respondent’s only arguments against bad faith are several self-serving, unsupported, and conclusory statements such as ‘David Brodsky has been in the consulting industry for over 20 years. This clearly demonstrates that the Respondent did not have malicious or exploitative intent directed at the Complainant’.”
In response to Respondent’s request for a finding of reverse domain name hijacking, Complainant states, inter alia, that it “is doing everything in its power to discover these types of domains, and therefore, it is unreasonable to attribute constructive knowledge of Respondent’s infringing domain to Capital One”; that it “did not delay in taking action against the infringing domain name once it was flagged by Capital One’s third party monitoring service”; and that it “has been diligent in its approach to Respondent’s infringing domain, but even if Capital One had delayed in taking action, such delay is insufficient to excuse Respondent’s bad faith.”
The Panel finds that the Disputed Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and that Respondent registered and is using the Disputed Domain Name in bad faith.
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.
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the CAPITAL ONE Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CAPITAL ONE Trademark, the relevant comparison to be made is with the second-level portions of the Disputed Domain Names only (i.e., “capital1solutions”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), para. 1.11.1.
Substitution of the word “one” (in the CAPITAL ONE Trademark) with the numeral “1” (in the Disputed Domain Name) does nothing to alleviate any confusing similarity because, as a previous panel said in the same situation involving the same trademark, “changing a letter to a number does not adequately distinguish the disputed domain name from the registered trademark” Capital One Financial Corp. v. TROY TAITT / CAPITAL 1 RECORDS, (Forum 1602627) (<capital1records.com>). See also Capital One Financial Corp. v. Mike Morgan, (Forum 1579519) (“[c]hanging a word into a number... does not differentiate a disputed domain name”).
The addition of the word “solutions” to the Disputed Domain Name also does nothing to alleviate any confusing similarity because, as previous panels have said, in decisions also involving the same addition, the word “solutions” “do[es] not substantially diminish the similarity between the domain name and Complainant’s mark.” BBY Solutions, Inc. v. Domain Admin, C/O ID#10760 / Privacy Protection Service INC d/b/a PrivacyProtect.org, NAF Claim No. 1730225 (<bestbuy24x7solutions.com>). See also Wells Fargo & Company v. Guardian Protector Plus LLC, (Forum 1216484) (the word “solutions” “commonly describe[s] business operations, and do[es] not differentiate the disputed domain name from Complainant’s mark” (<wellsfargobusinesssolutions.com>).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not commonly known by the disputed domain name” given that “Registrant’s name is ‘David Brodsky’”; “Complainant has never authorized Respondent to use its CAPITAL ONE trademark, much less use the mark as a domain name, and Respondent is not a licensee of Complainant”; Respondent’s “website (purportedly) providing services that closely relate to and overlap with those of Complainant… is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”; and “Respondent’s willingness to sell his disputed domain name to Complainant establishes Respondent’s lack of rights and legitimate interests in the domain name.”
WIPO Overview 3.0, paragraph 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case. Although Respondent has submitted a Response, the Response does not contain relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. Rather, Respondent relies on essentially two arguments: (1) it has obtained “a DBA registration” from a county clerk in the state of Texas, and (2) its business does not compete with Complainant.
As to the first argument, the document provided by Respondent states only that the county clerk “acknowledge[s] receipt of certificate of operation under Assumed Name which was filed in my office for CAPITAL ONE SOLUTIONS under the file number as shown on the cash register validation above, and indexed in the Assumed Name Records as prescribed by law” and that Respondent is “the owner(s) of said business.” The document does not state that Respondent has been commonly known by the name “CAPITAL ONE SOLUTIONS,” and, to the best of the Panel’s knowledge, such documents are not typically subject to review or scrutiny and instead are filed as a matter of course. To the extent that this document is evidence of anything greater, the burden is on Respondent to explain such significance and provide authority for same, neither of which Respondent has done. See, e.g., Laerdal Medical Corporation vs. Locks Computer Supply, WIPO Case No. D2002-0063: “Most states... do not perform trademark clearance searches before granting a DBA request. The DBA laws in most states are designed to protect consumers from deceptive business practices. The granting of a DBA request is not an authorization to use the DBA under the trademark laws.”
As to the second argument, it is clear that the CAPITAL ONE Trademark is used in connection with services that are similar to those offered by Respondent, even if they are not identical. Such uses cannot qualify as “bona fide” under paragraph 4(c)(i) of the UDRP. See, e.g., Six Continents Hotels, Inc. fka Bass Hotels & Resorts, Inc. v. Cortlandt Colonial Restaurants and Receptions, WIPO Case No. D2003-0292 (finding no rights or legitimate interests where the disputed domain name was used to “promote services arguably competitive to, and certainly related to Complainant’s services”).
Therefore, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
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 UDRP:
(i) circumstances indicating that the respondent has registered or the respondent 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 respondent’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 argues that bad faith exists pursuant to paragraph 4(b)(iii), for the reasons set forth above.
Numerous panels have found that the use of a confusingly similar domain name in which a respondent lacks rights or legitimate interests was registered and is being used in bad faith where, as here, the domain name is being used in connection with a website that offers services similar – even if not identical – to those offered by the complainant under the applicable trademark. See, e.g., InfoSpace, Inc. v. Telos Chamir, WIPO Case No. D2011-1256 (finding bad faith where “the Respondent has linked the disputed domain name to a website offering very similar if not identical services”); AdvoCard Rechtsschutzversicherung AG v. Advocard International Limited, WIPO Case No. D2012-1384 (finding bad faith even where respondent alleged that its “services differ considerably from” those of complainant); and Humana Inc. v. Domains Ventures, WIPO Case No. D2006-0263 (finding bad faith where domain name was used in connection with a website offering “related though not identical goods and services”).
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capital1solutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Because this decision is in favor of Complainant, Respondent’s request for a finding of reverse domain name hijacking is denied.
Douglas M. Isenberg, Panelist
Dated: August 4, 2017
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