Citizens Financial Group, Inc. v. Domain Park Limited
Claim Number: FA0709001082415
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citizenbankonlinebanking.com>, registered with Moniker Online Services, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 28, 2007.
On September 28, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <citizenbankonlinebanking.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 October 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 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 October 26, 2007, 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 provides a wide range of financial services
With $161 billion in assets, Complainant is the tenth
largest commercial bank holding company in the
Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the CITIZENS BANK ONLINE mark (Reg. No. 2,407,272, issued November 21, 2000).
Respondent registered the disputed <citizenbankonlinebanking.com> domain name on July 23, 2007.
Respondent is not commonly known by the contested domain name.
Respondent is not a licensee of Complainant’s CITIZENS BANK ONLINE mark and is not otherwise authorized to use Complainant’s mark.
Respondent’s domain name resolves to a website featuring links to third-party websites, some of which offer goods and services in competition with the business of Complainant.
Respondent’s <citizenbankonlinebanking.com> domain name is confusingly similar to Complainant’s CITIZENS BANK ONLINE mark.
Respondent does not have any rights or legitimate interests in the domain name <citizenbankonlinebanking.com>.
Respondent registered and uses the <citizenbankonlinebanking.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 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 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 a 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 registration of the CITIZENS BANK ONLINE mark with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). 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.”
Respondent’s <citizenbankonlinebanking.com> domain name is confusingly similar to Complainant’s CITIZENS BANK ONLINE mark, inasmuch as it incorporates the dominant portion of the mark, and merely omits the letter “s” from the word “citizen” and adds the descriptive term “banking.” Because “banking” is descriptive of Complainant’s business, such an addition to the disputed domain name, along with the omission of the letter “s” in the term “citizen,” does not negate confusing similarity between the disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See, for example, Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business).
In addition, the inclusion of the generic top-level domain “.com” in the disputed domain name is irrelevant, because a top-level domain is a required element of all domain names. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel therefore finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant next alleges that Respondent lacks rights and legitimate interests in the <citizenbankonlinebanking.com> domain name. Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving this allegation, but the burden shifts to Respondent once Complainant has made out a prima facie case. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with a respondent to demonstrate that it has rights or legitimate interests).
Complainant made a prima facie showing under the Policy, and Respondent’s failure to answer the Complaint allows us to presume that Respondent has no rights or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.
See also American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002): “[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.” However, we will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
In this connection, we first observe that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain. Indeed nothing in the record, including Respondent’s WHOIS information, suggests that Respondent is commonly known by the disputed domain. Moreover, it is undisputed that Respondent is not a licensee of Complainant’s CITIZENS BANK ONLINE mark and is not otherwise authorized to use Complainant’s mark. We conclude, therefore, that Respondent lacks rights and legitimate interests in the domain name <citizenbankonlinebanking.com> pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that in the absence of evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
We also note that there is no dispute that the domain is issue resolves to a website featuring links to websites in competition with the business of Complainant. We presume that Respondent earns click-through fees when Internet users click on these links. Such use is not 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). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (a respondent’s use of a disputed domain name to redirect Internet users to websites unrelated to a complainant’s mark where that respondent presumably receives 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links to that complainant’s competitors, was not a bona fide offering of goods or services).
The Panel thus finds that Complainant satisfied Policy ¶ 4(a)(ii).
As has already been mentioned, we presume that Respondent benefits commercially when Internet users click on the links featured on the website that resolves from the <citizenbankonlinebanking.com> domain name. Thus, we conclude that Respondent is attempting to attract, for financial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s CITIZENS BANK ONLINE mark as to the possible source, sponsorship, or affiliation of complainant with the disputed domain name. This is evidence of Respondent’s bad faith registration and use under 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 Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there in question was, for evident commercial gain, improperly connected with a complainant’s well-known marks, thus creating a likelihood of source confusion).
In addition, it appears that Respondent registered the <citizenbankonlinebanking.com> domain name with at least constructive knowledge of Complainant’s rights in the CITIZENS BANK ONLINE service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of 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).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <citizenbankonlinebanking.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 9, 2007
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