Citigroup Inc. and Citigroup
Global Markets Inc. v. John Pepin
Claim Number: FA0708001059354
PARTIES
Complainant is Citigroup Inc. and Citigroup Global
Markets Inc. (“Complainant”),
represented by Paul D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citismithbarney.com>, registered
with Fabulous.com
Pty Ltd.
PANEL
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.
David P. Miranda, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 8, 2007; the
National Arbitration Forum received a hard copy of the Complaint on August 9, 2007.
On August 8, 2007, Fabulous.com Pty Ltd. confirmed by e-mail to
the National Arbitration Forum that the <citismithbarney.com> domain name is
registered with Fabulous.com Pty Ltd. and
that the Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 August 10, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of August 30, 2007 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@citismithbarney.com by
e-mail.
A timely Response was received and determined to be complete on August 20, 2007.
On August 28, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant, Citigroup Inc. and Citigroup Global Markets Inc.
(hereinafter “Complainant”), seeks transfer of the domain name <citismithbarney.com> from Respondent John Pepin
(hereinafter “Respondent”). Complainant
alleges that Citigroup is the world reknowned financial services company that
owns an extensive family of famous trademark and service marks, comprised of or
featuring the CITI trademark, including but not limited to U.S. Registration
No. 1,181,467, and the SMITH BARNEY trademark including but not limited to U.S.
Registration No. 1,986,586. Complainant
contends that it has registered CITI and/or SMITH BARNEY marks in approximately
200 countries throughout the world for its financial and investment services
and related services. The CITI mark
has been registered since at least as early as December 8, 1981, and the SMITH
BARNEY mark has been in use since 1960, and registered since July 16,
1996. Complainant contends that it sent
a cease and desist letter to the prior registrant of the domain name, Kevin
Reed, who instead of complying with Complainant’s transfer demand, modified the
WHOIS record to reflect Respondent John Pepin as the owner and that Respondent
John Pepin is currently holding the domain name passively. The prior registrant of the mark was using
the mark in conjunction with a pay-per-click advertising page promoting
competing goods and services.
Complainant contends that the Respondent referred to in the WHOIS record
is John Pepin and is not known as CitiSmithBarney, and is not operating any bona fide or legitimate business under the name
CitiSmithBarney. Complainant contends
that given the considerable registration and use of Complainant’s marks,
Respondent knew, or should have known of such marks at all relevant times, such
knowledge is sufficent for a finding of bad faith registration, and that Internet
users are likely to be induced to believe that the offending domain is
connected to websites associated with or sponsored by Complainant when such is
not the case. Complainant further
contends that the passive holding of a domain name by the registrant is further
evidence of bad faith.
B. Respondent
Respondent John Pepin does
not contest Complainant’s allegations.
Respondent states that he was not aware of the registration of the
domain name, and that he is of the belief that someone registered the domain in
his name without his knowledge.
Respondent further states his desire to transfer the domain name to
Complainant.
FINDINGS
Complainant has established, and Respondent does not
contest that Complainant is the owner of the trademark registrations and that
the domain name at issue <citismithbarney.com> is identical or
confusingly similar to Complainant’s registrations. Since Respondent
consents to the transfer of the domain name to the Complainant, the panel
forgoes an analysis of the issues, and directs the transfer of the domain name
to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Respondent does not contest
Complainant’s allegations regarding the <citismithbarney.com> domain name.
Rather, Respondent has consented to judgment in favor of Complainant
and authorized the immediate transfer of the subject domain name. Where Respondent has consented to the
transfer of the disputed domain name, the Panel may forego the traditional UDRP
analysis and order the immediate transfer of the domain name. Martin
Biochem, Inc. v. Benjamin Crosby, FA0706001008277 (Nat. Arb. Forum July 31,
2007); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web
Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain
name registration where the respondent stipulated to the transfer); see also
Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb.
Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain
name to be transferred to the Complainant . . . Since the requests of the
parties in this case are identical, the Panel has no scope to do anything other
than to recognize the common request, and it has no mandate to make findings of
fact or of compliance (or not) with the Policy.”); see also Disney Enters.,
Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such
circumstances, where Respondent has agreed to comply with Complainant’s
request, the Panel felt it to be expedient and judicial to forego the
traditional UDRP analysis and order the transfer of the domain names.”).
DECISION
Both parties having consented to the transfer of the domain name, the
Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citismithbarney.com> domain name be TRANSFERRED
from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: September 10, 2007
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