Citigroup Inc. v. Total Net Solutions
Claim Number: FA0710001094705
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 <myciticards.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 19, 2007.
On October 23, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <myciticards.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 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 14, 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@myciticards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <myciticards.com> domain name is confusingly similar to Complainant’s CITICARD mark.
2. Respondent does not have any rights or legitimate interests in the <myciticards.com> domain name.
3. Respondent registered and used the <myciticards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., and its predecessors in interest have continuously used the CITICARD mark since 1973 in connection with financial services and electronic funds transfer and access systems. Complainant has registered the CITICARD mark in numerous jurisdictions worldwide, including with the United States Patent and Trademark Office (“USPTO”)(Reg. No. 1,423,239 issued December 30, 1986).
Respondent’s <myciticards.com> domain name was registered on November 26, 2005 and currently resolves to a commercial search engine, advertisements, and various links to third-parties, many of which offer services and products in direct competition with those offered under Complainant’s CITICARD mark.
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
CITICARD mark through registration with the USPTO pursuant to 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.”);
see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat.
Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination
that a mark is registrable, by so issuing a registration, as indeed was the
case here, an ICANN panel is not empowered to nor should it disturb that
determination.”).
Respondent’s <myciticards.com> domain name
contains Complainant’s mark in its entirety, but pluralized by the inclusion of
the letter “s.” It is also preceded by
the generic term “my” and followed by the generic top-level domain (“gTLD”)
“.com.” It is well established the
inclusion of a generic word and the addition of a “s”
does not distinguish a disputed domain name.
Further, the inclusion of a gTLD is not relevant to a Policy ¶ 4(a)(i)
analysis. Therefore, pursuant to Policy
¶ 4(a)(i), the Panel finds that Respondent’s <myciticards.com>
domain name is confusingly similar to Complainant’s CITICARD mark. See Cream Pie Club v. Halford, FA
95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to
the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood
of confusion caused by the use of the remaining identical mark. The domain name
<creampies.com> is similar in sound, appearance, and connotation”); see
also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000)
(finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT
as a prominent part thereof, is confusingly similar to the Complainant’s trade
name and trademark NIIT”); see also 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 concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a
prima facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See VeriSign Inc. v. VeneSign
Respondent has not filed a response to the Complaint. Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the disputed domain name, but will still proceed to examine the record in consideration of the factors listed under Policy ¶ 4(c). 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
Respondent’s refers to itself in the WHOIS information as “Total Net Solutions.” Nowhere else in the record does it indicate that Respondent is or ever was commonly known by the disputed domain name. Moreover, Complainant has never granted permission for Respondent to use its CITICARD mark in anyway. As a result, the Panel finds that Respondent is not commonly known by the <myciticards.com> domain name pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); 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).
Respondent’s <myciticards.com>
domain name resolves to a commercial search engine, advertisements, and various
links to third-parties, many of which offer services and products in direct
competition with those offered under Complainant’s CITICARD mark. The Panel finds this to be neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name
to host a series of hyperlinks and a banner advertisement was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the domain name); 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’s <myciticards.com> domain name
resolves to a website containing links to various third-parties, many of whom
offer products and services in direct competition with those offered under
Complainant’s mark. The Panel finds this
to be evidence that Respondent registered and is the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iii).
See EBAY, Inc. v. MEOdesigns,
D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites); see also 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).”).
Moreover, Respondent is presumed to be financially
benefiting from the advertisements, commercial search engine, and various
links, through the use of “click-through” fees.
The Panel finds this to be additional evidence of Respondent’s bad faith
registration and use 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 <myciticards.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 3, 2007
National
Arbitration Forum
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