Citigroup Inc. v. Adamo Cardosi
Claim Number: FA0605000708953
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Adamo Cardosi (“Respondent”), GPO Box 12295, Central, Hong Kong SAR 0000 HK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citibankbusinesscard.com>, registered with Moniker Online Services, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 18, 2006.
On May 20, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <citibankbusinesscard.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@citibankbusinesscard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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." 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 makes the following assertions:
Complainant and its predecessors in interest have offered financial services under its trademarks since at least 1959.
Complainant holds trademark registrations in many 200 countries worldwide, including with the United States Patent and Trademark Office (“USPTO”).
Complainant holds a registration with the USPTO for its CITIBANK mark (Reg. No. 691,815 issued January 19, 1960).
Respondent registered the disputed domain name <citibankbusinesscard.com> on November 9, 2005.
Respondent’s domain name resolves to a website featuring links to third-party websites that offer various goods and services, some of which are in direct competition with those of Complainant.
Respondent’s <citibankbusinesscard.com> domain name is confusingly similar to Complainant’s CITIBANK mark.
Respondent does not have any rights or legitimate interests in the domain name <citibankbusinesscard.com>.
Respondent has registered and uses the <citibankbusinesscard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant's federal trademark registrations with the pertinent national authorities worldwide establish Complainant’s rights in the CITIBANK mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a respondent operates; rather, it is sufficient that a complainant can demonstrate a mark in some jurisdiction).
Moreover, Respondent’s <citibankbusinesscard.com> domain name is confusingly similar to Complainant’s CITIBANK mark pursuant to Policy ¶ 4(a)(i), as it contains Complainant’s entire mark and merely adds the generic terms “business” and “card.” Other panels have concluded that the addition of a generic term to a complainant’s mark in a domain name does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). In the instant case, Respondent added generic terms that are commonly related to Complainant’s business through its offering of financial services. In Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001), a panel found that the <hoylecasino.net> domain name was confusingly similar to a complainant’s HOYLE mark, as the addition of “casino,” a generic word describing the type of business in which the complainant engages, did not take the disputed domain name out of the realm of confusing similarity. See also 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).
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under Policy ¶ 4(a)(i), and that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <citibankbusinesscard.com> domain name. Complainant must first make out a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it indeed has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, in circumstances like those here presented, the burden of proof lies with a respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the complaint in this proceeding raises a presumption that it has no rights or legitimate interests in the <citibankbusinesscard.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.
However, the Panel will nonetheless examine the record to determine if thee is evidence to justify a conclusion that Respondent has rights or legitimate interests sufficient for purposes of Policy ¶ 4(c).
Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. There is also no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), a panel found no rights or legitimate interests in a respondent where that respondent was not commonly known by the mark and had never applied for a license or permission from a complainant to use the trademarked name. See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003):
Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.
Therefore, the Panel finds that the Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The evidence on record does indicate that Respondent is using the disputed domain name to operate a website which provides links to third-party websites offering various goods and services, some of which are in direct competition with those of Complainant. Based on the evidence on record, the Panel infers that Respondent receives click-through fees for visits to such sites. As a result, the Panel concludes that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to websites unrelated to a complainant’s mark, websites where that respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003):
Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).
For all of these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
It is uncontested from Complainant’s proofs that Respondent’s domain name <citibankbusinesscard.com> resolves to website that provide links to third-party websites, some of which directly compete with Complainant’s business. From this the Panel concludes that Respondent registered and uses the domain name with the intent to disrupt Complainant’s business. Such conduct is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding a respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that a respondent registered and used the domain name <eebay.com> in bad faith where that respondent used the domain name to promote competing auction sites).
Moreover, taking Complainant’s uncontested allegations as true, the Panel concludes that Respondent registered and is using the disputed domain name to divert Internet users in order to benefit commercially through click-through fees. Respondent’s domain name, incorporating, as it does, the dominant feature of Complainant’s mark, is capable of creating confusion as to Complainant’s possible affiliation with the disputed domain name and related websites. Thus the Panel believes that Respondent’s conduct evidences bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003):
Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.
See also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when the domain name resolves to commercial websites and that respondent fails to contest the complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Finally under this heading, it appears that Respondent registered the contested domain name with either actual or constructive knowledge of Complainant’s rights in the CITIBANK mark by virtue of Complainant’s prior registration of that mark with the pertinent national authorities worldwide. Registration and use of a confusingly similar domain name despite such actual or constructive knowledge evidences bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <citibankbusinesscard.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 28, 2006
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