Citizens Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2004001894431
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by Robert M. O'Connell of Orrick, Herrington & Sutcliffe LLP, Massachusetts, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citizensbankppp.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2020; the Forum received payment on April 30, 2020.
On May 1, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citizensbankppp.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 May 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2020 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@citizensbankppp.com. Also on May 5, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 disputed domain name <citizensbankppp.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the CITIZENS BANK service mark acquired through its ownership and use of its portfolio of registered trademarks described below and by virtue of its continuous common-law use of the mark since 1828. See Next Education, LLC v. Vibhooti Kishor/Animation Mentor, FA 1450133 (Forum Aug. 9, 2012) (“Typically, panels find that registration with the USPTO establishes rights in a given mark.”).
Complainant asserts that it was founded in 1828 has since grown to have approximately 1,200 branches across eleven of the United States.
Complainant submits that the disputed domain name is confusingly similar to its CITIZENS BANK service mark arguing specifically that it is identical to Complainant’s mark inasmuch as it incorporates Complainant’s mark in its entirety, adding only the letters “ppp”.
Complainant submits that a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark”, citing PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).
Complainant adds that the addition of the letters “ppp” does nothing to further distinguish the disputed domain name from Complainant’s CITIZENS BANK mark, citing Google Inc. v. Chris Gillespie, FA1203001434643 (Forum May 10, 2012) (concluding that the domain names <googleindustrialandcommercialbankofchina.com>, <googleroyalbankofscotland.com>, <googledisneyland.com>, and <googlepoland.com> were confusingly similar to Complainant’s GOOGLE mark and ordering transfer of domain names to Complainant).
Complainant suggests that the letters “ppp” may infers a connection with the Covid-relief small business loans through the Paycheck Protection Program (commonly referred to as “PPP”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that:
Respondent is not commonly known as or referred to as “CITIZENS BANK” or any variation thereof, citing Uprising Comm. Group, LLC v. Whois Privacy Protection Service, Inc., FA 1454025 (Forum Aug. 28, 2012) (concluding that “the Respondents are not commonly known by the disputed domain name based on the WHOIS information, and can therefore not demonstrate rights and legitimate interests in the disputed domain name under Paragraph 4(c)(ii) of the UDRP);
Complainant has never authorized anyone to register the disputed domain name;
Respondent is not authorized or licensed to use the CITIZENS BANK mark, citing STMicroelectronics, Inc. v. UniQuip Plus, Inc., FA 1371892 (Forum Mar. 9, 2011) (concluding that the respondent was not “commonly known by” the disputed domain names based on WHOIS information and the fact that complainant had not authorized the respondent to register a domain name incorporating its mark);
Additionally, Complainant refers to a screenshot of the website to which the disputed domain name resolves which shows a web page with merely a list of links that resolve to web pages featuring links to competitors of a complainant, which presumably generates commercial benefit though click through advertising fees. Complainant submits that such use not constitute a bona fide offering of goods or services or a non-commercial fair use of the disputed domain name.
Complainant then alleges that the disputed domain name was registered and is being used in bad faith asserting that Complainant first adopted and first used the CITIZENS BANK mark over 40 years ago, long before the disputed domain name was registered on April 6, 2020. Complainant adds that it has a large and well-known retail and commercial bank with a strong market presence in the north-eastern and midwestern United States and argues that where a domain name is “so obviously connected with such a well-known name and products… its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Quintas, D2000-0226 (WIPO May 17, 2000).
On Friday, March 27, 2020, the Coronavirus Aid, Relief and Economic Security (CARES) Act was enacted in the United States. A key part of this legislation is the Paycheck Protection Program—often referred to as “PPP”. This program provides small businesses with funds in order to stay afloat through the COVID-19 pandemic.
Complainant asserts that it is a participating institution in this program and refers to its own website at <https://www.citizensbank.com/smallbusiness/paycheck-protection-program.aspx> which states that “[i]f you are a Citizens Bank business customer, with a loan or deposit relationship, you can apply for the SBA Paycheck Protection Program and upload documentation right from your desktop or mobile device.”
Complainant submits that Respondent undoubtedly was aware of this program when it registered the disputed domain name and intended that it was registered to be used to mislead Complainant’s customers a time of great social and economic stress and vulnerability Complainant submits that the fact that the disputed domain name was registered just days after the CARES Act was enacted, leaves no doubt that the it was registered and is being used in bad faith.
Referring to the website to which the disputed domain name resolves Complainant submits that it illustrates that the disputed domain name is being used in bad faith as it merely contains links to third party websites including links to Complainant’s competitors. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum Jul. 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”).
Furthermore, Complainant alleges that Respondent is engaged in a pattern of abusive registration of domain names. Complainant submits that Respondent is listed as the named registrant on hundreds of domain names. Further, a review of the Forum’s UDRP database on May 4, 2020 revealed that Respondent has been a named respondent in numerous UDRP disputes, and has been ordered to transfer domain names in 89 different decisions examples of which include: Amazon Technologies, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1811001819070 (Forum Dec. 27, 2018) (ordering transfer of <amazøn.com> domain name from respondent to complainant); For Your Ease Only, Inc. v Carolina Rodrigues /Fundacion Comercio Electronico, FA1302001483711 (Forum July 14, 2019) (ordering transfer of <lorigrenier.com> domain name from respondent to complainant); Webster Financial Corporation and Webster Bank, National Association v. Carolina Rodrigues /Fundacion Comercio Electronico, FA1806001792378 (Forum July 25, 2018) (ordering transfer of <websterbsnk.com> domain name from respondent to complainant).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a long-established provider of financial services in the United States offering retail and commercial banking to individuals and corporate clients.
Complainant is the owner of the trademark CITIZENS BANK for which it has large portfolio of trademark registrations, which both pre-date and post-date the registration of the disputed domain name. The most relevant to this proceeding being the following Untied States service mark registrations:
· CITIZENS BANK [& cube design] Registration No. 2,668,486, registered on December 13, 2002 on the Principal Register for services in international class 36;
· CITIZENS BANK (& Daisy design) registration number 3,269,702, registered on July 24, 2007 on the Principal Register for services in international class 36; (This registration is co-owned with The Royal Bank of Scotland Group PLC, Complainant’s former parent entity and owner of the “daisy” design.);
· CITIZENS BANK (& Daisy design) registration number 3,269,710, registered July 24, 2007, on the Principal Register for services in international class 36; (This registration is co-owned with The Royal Bank of Scotland Group PLC, Complainant’s former parent entity and owner of the “daisy” design.)
· CITIZENS BANK (& Daisy design) registration number 3,269,714, registered on July 24, 2007, on the Principal Register for services in international class 36; (This registration is co-owned with The Royal Bank of Scotland Group PLC, Complainant’s former parent entity and owner of the “daisy” design.)
· CITIZENS BANK (& Daisy design/green) registration number 3,269,705, registered on July 24, 2007 on the Principal Register for services in international class 36; (This registration is co-owned with The Royal Bank of Scotland Group PLC, Complainant’s former parent entity and owner of the “daisy” design.)
· CITIZENS BANK ONLINE registration number 2,407,272,registered on November 21, 2000, on the Principal Register for services in international class 38;
· CITIZENS BANK BUSINESS ONLINE Registration No. 2,657,801, issued December 10, 2002, on the Principal Register for services in international class 36.
Complainant also maintains an Internet presence for its services at its website at <www.citizensbank.com>.
The disputed domain name <citizensbankppp.com> was registered on April 6, 2020 and resolves to a website with links to third party websites, including competitors of Complainant.
There is no information available about Respondent, who availed of a privacy service to conceal his identity on the published WHOIS, except for that provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name, which disclosed his identity.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear and convincing evidence of its rights in the CITIZENS BANK service mark acquired through its ownership and use of the above described portfolio of service mark registrations in its financial services business.
The disputed domain name consists of Complainant’s CITIZENS BANK service mark, the letters “ppp” and the generic Top Level Domain <.com> extension.
Complainant’s mark is the initial and dominant element in the disputed domain name. The letters “ppp” have no distinctive character. In the context of the present dispute where the letters have been added to Complainant’s trademark, it would appear that, as argued by Complainant, they refer to the Paycheck Protection Program which is been introduced by the United States federal government to provide relief to those suffering economic hardship due to the Covid-19 shutdown of many businesses.
For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the CITIZENS BANK service mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name; that Complainant has never authorized anyone to register the disputed domain name; that Respondent is not authorized or licensed to use the CITIZENS BANK mark; and has adduced in evidence a screenshot of the website to which the disputed domain name resolves which shows a web page with merely a list of links that resolve in turn to web pages featuring links to competitors of a complainant.
Complainant submits that Respondent presumably generates commercial benefit though click through advertising fees which, in context, does not constitute a bona fide offering of goods or services or a non-commercial fair use of the disputed domain name.
It is well established that if a complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name.
Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered on April 6, 2020 long after Complainant first adopted and first used the CITIZENS BANK mark over 40 years ago. Complainant has a large spread of retail banking outlets across the United States and established Internet presence. It is most improbable that the registrant of the disputed domain name was unaware of Complainant, its reputation and goodwill, and its CITIZENS BANK mark when the disputed domain name was chosen and registered.
On the balance of probabilities, the disputed domain name was chosen specifically to create a reference to Complainant’s business, particularly in the context of the Paycheck Protection Program initiative in which Complainant is participating. The Paycheck Protection Program was initiated on Friday, March 27, 2020 and the disputed domain name was cynically registered on April 4, 2020.
This program provides small businesses and their employees with funds to survive the COVID-19 pandemic at a time of great social and economic stress and vulnerability. Respondent has caused permitted or allowed the disputed domain name to resolve to a website with links to Complainant’s competitors at a time when Complainant is supporting its most vulnerable clients.
This Panel finds that the disputed domain name is being used in bad faith by Respondent in an intentional attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and diverting the traffic to Complainant’s competitors.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citizensbankppp.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 30, 2020
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