Citigroup Inc. and Citigroup Global Markets Inc. v. John Pepin
Claim Number: FA0708001059354
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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.”).
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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