Citigroup Inc. v. Stefan Hamm / Curam Holding AG
Claim Number: FA2010001917533
Complainant is Citigroup Inc. (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is Stefan Hamm / Curam Holding AG (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citiconnect.org>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2020; the Forum received payment on October 19, 2020.
On October 20, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citiconnect.org> 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 October 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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@citiconnect.org. Also on October 26, 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.
On November 16, 2020, Respondent submitted a Response.
On November 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 domain name be transferred from Respondent to Complainant.
A. Complainant
i)Complainant, Citigroup, Inc., operates an American multinational bank and financial services corporation. It has been named one of the most valuable global brand. Complainant has rights to the CITI and CITICONNECT marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. CITI - Reg. 1,181,467, registered Dec. 8, 1981; CITICONNECT - Reg. 3,830,289, registered Aug. 10, 2010). The disputed domain name is confusingly similar to Complainant’s CITI and CITICONNECT marks, only adding the “.org” generic top-level domain (“gTLD”) to the CITICONNECT mark. Additionally, the disputed domain name is confusingly similar to Complainant’s CITI mark, only differing by adding the gTLD “.org” and the generic term “connect.”
ii)Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is not a licensee or authorized user of the CITI or CITICONNECT marks. Moreover, Respondent has not made a bona fide offer of goods or services with the disputed domain name, and has not engaged in any legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a page with links to identical or highly similar services to those offered by Complainant, creating the false impression that Complainant is endorsing, sponsoring, or somehow affiliated with the disputed domain name and the links.
iii)Respondent registered and uses the disputed domain name in bad faith. Respondent uses the domain name to link to competing services and give the false impression of association or affiliation with Complainant. Given the international notoriety of Complainant, simply using the mark without connection to Complainant shows opportunistic bad faith and registration of the domain name with actual knowledge of Complainant’s marks
B. Respondent
Respondent protests all claims made by Complainant. Respondent purchased the domain name and is the legal owner of the domain name.
1. The disputed domain name was registered on August 2, 2019.
2. Complainant has established rights to the CITI and CITICONNECT marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. CITI - Reg. 1,181,467, registered Dec. 8, 1981; CITICONNECT - Reg. 3,830,289, registered Aug. 10, 2010).
3. The disputed domain name’s resolving webpage displays links to the competing services and which creates the false impression that Complainant is somehow affiliated with the website, passing the website off as 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.
Complainant asserts rights in the CITI and CITICONNECT marks through its registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides evidence of registration of both marks with the USPTO (e.g. CITI - Reg. 1,181,467, registered Dec. 8, 1981; CITICONNECT - Reg. 3,830,289, registered Aug. 10, 2010). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s CITICONNECT mark, differing only by the addition of the “.org” gTLD. Adding a gTLD to a mark is not enough to distinguish the domain name from the Complainant’s mark. See 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017) (“Respondent’s <nexcare.org> domain name incorporates the NEXCARE mark and merely adds “.org.” This addition does not distinguish the disputed domain name from Complainant’s mark… Thus, the Panel finds that Respondent’s <nexcare.org> domain name is confusingly similar to Complainant’s NEXCARE mark.”). Additionally, Complainant contends that the disputed domain name is confusingly similar to Complainant’s CITI mark, only adding the generic term “connect” along with the “.org” gTLD. Adding a generic and/or descriptive terms and a gTLD does not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc. v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is not a licensee or authorized user of the CITI or CITICONNECT marks. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Lack of authorization to use a mark further evidences that a respondent lacks rights and legitimate interests in the mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information of record identifies the registrant as “Stefan Hamm / Curam Holding AG”, and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use the CITI or CITICONNECT marks in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use but rather diverts Internet traffic to a website that offers identical or highly similar services to those Complainant offers. Use of a disputed domain name to redirect Internet users to a competing webpage is generally not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the webpage which provides links to the competing services. Complainant contends that linking to competing services creates the false impression that Complainant is somehow affiliated with the website, passing the website off as Complainant. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Thus, the Panel agrees that Respondent does not use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent protests all claims made by Complainant. Respondent contends that it purchased the disputed domain name and is the legal owner of the disputed domain name.
As the Panel finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that i) Respondent’s use of the disputed domain name to link to identical or highly similar services and give the impression of association or affiliation with Complainant shows bad faith registration and use, and ii) Respondent registered and uses the disputed domain name in bad faith as it is inconceivable that Respondent did not know of Complainant’s rights in the CITI and CITICONNECT marks, given their international notoriety, prior to registering for the disputed domain.
Respondent protests all claims made by Complainant. Respondent purchased the disputed domain name and is the legal owner of the domain name. The Panel does not accept its argumentation because Respondent’s argumentation contains mere conclusory or unsubstantiated arguments.
The Panel observes that the use of a domain name to link to competing goods or services to attract Internet users for commercial gain can show bad faith registration and use under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Additionally, giving the false impression of that a respondent is or is associated with a complainant may also show bad faith registration and use under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel recalls Complainant provides a screenshot of the webpage which provides links to the competing services and which Complainant asserts creates the false impression that Complainant is somehow affiliated with the website, passing the website off as Complainant. As the Panel agrees, the Panel finds Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant claims Respondent registered and uses the disputed domain name in bad faith as it is inconceivable that Respondent did not know of Complainant’s rights in the CITI and CITICONNECT marks, given their international notoriety, prior to registering for the disputed domain. When a complainant’s organization is so globally well-known and established, the registration of a website using one of its marks can demonstrate bad faith registration. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). To demonstrate the notoriety of Complainant's marks, Complainant provides articles pertaining to Complainant's business, Complainant's 10-k filing with the U.S. Securities and Exchange Commission, and evidence of global brand rankings. The Panel infers, due to the notoriety of Complainant’s marks and the manner of use of the disputed domain name that Respondent registered or purchased the disputed domain name with actual knowledge of Complainant's rights in the marks and in bad faith under 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 <citiconnect.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 30, 2020
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