Citigroup Inc. v. Web Advertising, Corp.
Claim Number: FA0708001063496
Complainant is Citigroup Inc. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citicorpinvestmentservices.com>, registered with Belgiumdomains, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 16, 2007.
On August 15, 2007, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <citicorpinvestmentservices.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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:
1. Respondent’s <citicorpinvestmentservices.com> domain name is confusingly similar to Complainant’s CITICORP mark.
2. Respondent does not have any rights or legitimate interests in the <citicorpinvestmentservices.com> domain name.
3. Respondent registered and used the <citicorpinvestmentservices.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citicorp Inc., has continuously used the CITICORP mark in connection with financial services including consumer and commercial banking, lending, credit card, investment and other such related services. The CITICORP mark is registered in numerous jurisdictions worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 0,982,066 issued April 9, 1974).
On March 16, 2007, Respondent registered its <citicorpinvestmentservices.com> domain name. The domain name resolves to a commercial search engine with hyperlinks to both Complainant’s and other third-parties’ websites, all of which offer financial services in competition with those offered under Complainant’s CITICORP mark. Respondent has appeared previously as a respondent in similar proceedings where Panels have transferred the subject domain names from Respondent to the respective Complainants. See River Valley Credit Union, Inc. v. Web Adver. Corp., FA 771891 (Nat. Arb. Forum Sept. 26, 2006); see also Smooth Corp. v. Web Adver. Corp., FA 792048 (Nat. Arb. Forum Oct. 25, 2006); see also Guess? IP Holder L.P. v. Web Adver. Corp., FA 836506 (Nat. Arb. Forum Dec. 20, 2006); see also The Hazelden Found. v. Web Adver. Corp., FA 900203 (Nat. Arb. Forum Feb. 27, 2007); see also Jerry Damson, Inc. v. Web Adver. Corp., FA 903143 (Nat. Arb. Forum Feb. 8, 2007); see also W. Econ. Ass’n v. Web Adver. Corp., FA 896623 (Nat. Arb. Forum March 14, 2007).
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:
(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 has sufficiently established its rights in the
CITICORP mark through registration with the USPTO. See
<citicorpinvestmentservices.com> domain name incorporates Complainant’s CITICORP mark in
its entirety and then includes the generic and descriptive terms “investment”
and “services.” The disputed domain name
omits the spaces between these words and also includes the generic top level
domain (“gTLD”) “.com.” It is well
established that the omission of spaces and the inclusion of a gTLD are
irrelevant in a confusing similarity analysis.
Moreover, the inclusion of generic or descriptive terms that relate to
the services being offered under the subject mark, do not negate a finding of
confusing similarity. Accordingly, the
Panel finds that the disputed domain name is confusingly similar to
Complainant’s CITICORP mark pursuant to Policy ¶ 4(a)(i). See
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out
a prima facie case that Respondent
has no rights and legitimate interests in the domain name at issue. See
VeriSign Inc. Vene Sign,
Respondent has failed to submit a response to the Complaint. The Panel thus presumes that Respondent has no rights or legitimate interests in the <citicorpinvestmentservices.com> domain name, but will still consider all available evidence with respect to the factors listed in Policy ¶ 4(c) before making this determination. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Nowhere in Respondent’s WHOIS information does it indicate that Respondent is commonly known by the <citicorpinvestmentservices.com> domain name. There is also no other information in the record to indicate that Respondent is or ever has been known by the disputed domain name. Further, Respondent has not sought, nor has Complainant granted, a license or permission to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel presumes that Respondent is financially benefiting through click-through-fees by offering links to Complainant’s competitors. Moreover, the disputed domain name contains Complainant’s mark in its entirety. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has appeared in previous proceedings where the panels have transferred the subject domain name from Respondent to the respective Complainants. The Panel finds that this establishes without any affirmative evidence to the contrary that Respondent has registered and is using this disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Respondent’s <citicorpinvestmentservices.com> domain name is confusingly similar to Complainant’s CITICORP mark and contains a commercial search engine and links featuring third-party websites that compete with Complainant’s business and services offered under the CITICORP mark. The Panel finds this disruption to be additional evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
The panel also presumes that since the disputed domain name features links to competing third-party websites, that Respondent is financially benefiting from such use. The Panel finds this to be more evidence of Respondent’s bad faith use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel concludes that Complainant has satisfied 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 <citicorpinvestmentservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 24, 2007
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