Citigroup Inc. v. Chen Bao Shui
Claim Number: FA0802001142607
Complainant is Citigroup Inc. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <citifield.com>, <citiadvantage.com>, <citibankcanada.com>, <citicardscom.com>, <citicorpjobs.com>, <citybank.org> and <citifinicial.com>, registered with Rebel.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2008 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@citifield.com, postmaster@citiadvantage.com, postmaster@citibankcanada.com, postmaster@citicardscom.com, postmaster@citicorpjobs.com, postmaster@citybank.org and postmaster@citifinicial.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citifield.com>, <citiadvantage.com> and <citicardscom.com> domain names are confusingly similar to Complainant’s CITI mark; Respondent’s <citibankcanada.com> and <citybank.org> domain names are confusingly similar to Complainant’s CITIBANK mark; Respondent’s <citicorpjobs.com> domain name is confusingly similar to Complainant’s CITICORP mark; and Respondent’s <citifinicial.com> domain name is confusingly similar to Complainant’s CITIFINANCIAL mark.
2. Respondent does not have any rights or legitimate interests in the <citifield.com>, <citiadvantage.com>, <citibankcanada.com>, <citicardscom.com>, <citicorpjobs.com>, <citybank.org> and <citifinicial.com> domain names.
3. Respondent registered and used the <citifield.com>, <citiadvantage.com>, <citibankcanada.com>, <citicardscom.com>, <citicorpjobs.com>, <citybank.org> and <citifinicial.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc.,
is a world-renowned financial services company.
Complainant provides a wide variety of financial services to its
customers worldwide under its multiple trade and service marks. Complainant holds numerous registrations with
the United States Patent and Trademark Office (“USPTO”) for several marks,
including the CITI mark (Reg. No. 1,181,467 issued December 8, 1981); the
CITIFINANCIAL mark (Reg. No. 2,951,903 issued
Respondent registered the <citifield.com> domain name on January 1, 2007, the <citiadvantage.com> domain name on November 9, 2005, the <citibankcanada.com> domain name on November 19, 2005, the <citicardscom.com> domain name on May 3, 2004, the <citicorpjobs.com> domain name on October 6, 2005, the <citybank.org> domain name on October 13, 1997, and the <citifinicial.com> domain name on November 27, 2005. Respondent’s disputed domain names resolve to websites that display hyperlinks for various third-party websites, some of which are in direct competition with Complainant.
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
asserts rights in several marks on the basis of its registrations for those
marks with governmental authorities, including the USPTO. The Panel finds that Complainant’s
registrations for the CITI,
CITIFINANCIAL, CITIBANK and CITICORP marks establishes Complainant’s rights for
the purposes of Policy ¶ 4(a)(i). See Ameridream,
Inc. v. Russell, FA 677782 (Nat. Arb. Forum
May 24, 2006) (holding that with the complainant’s registration of the
AMERIDREAM mark with the USPTO, the complainant had established rights in the
mark pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum
The Panel finds that
Respondent’s <citifield.com>, <citiadvantage.com> and
<citicardscom.com> domain names are confusingly similar to Complainant’s CITI
mark under Policy ¶ 4(a)(i). The disputed domain names contain Complainant’s
mark in its entirety and add generic terms which do not distinguish the
disputed domain names, as well as the generic top-level domain (“gTLD”)
“.com.” The addition of generic terms to
Complainant’s distinctive mark is not enough to overcome the Policy ¶ 4(a)(i)
analysis, and neither is the addition of a gTLD, as a top-level domain is
required by the nature of domain names. See Westfield Corp. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the
Additionally,
Complainant asserts that Respondent’s <citibankcanada.com> and <citybank.org>
domain names are confusingly similar to Complainant’s CITIBANK mark, an
assertion the Panel agrees with. The
addition of the geographic term “
The Panel finds that
the <citicorpjobs.com> domain name is confusingly similar to
Complainant’s CITICORP mark under the requirements of Policy ¶ 4(a)(i) as the
disputed domain name contains Complainant’s entire mark and adds the generic
term “jobs,” which has an obvious relationship to Complainant’s business, as
well as a gTLD. See Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat.
Arb. Forum
Finally, Respondent’s
<citifinicial.com> domain name is confusingly similar to
Complainant’s CITIFINANCIAL mark under Policy ¶ 4(a)(i) as the misspelling of
Complainant’s mark contained in the disputed domain name, as well as the gTLD
does not distinguish the disputed domain name from Complainant’s mark under
Policy ¶ 4(a)(i). See Hewlett-Packard
Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests with regards to any of the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by
the disputed domain names, and this contention is supported by the WHOIS
registration information listing Respondent as “Chen
Bao Shui.” Furthermore, Complainant
states that it has not licensed, authorized, or otherwise permitted Respondent
to use its marks in domain names. Based
on this evidence and Respondent’s failure to submit affirmative evidence
indicating otherwise, the Panel finds that Respondent cannot establish rights
or legitimate interests in the <citifield.com>, <citiadvantage.com>, <citibankcanada.com>,
<citicardscom.com>, <citicorpjobs.com>, <citybank.org>
and <citifinicial.com> domain names pursuant to
Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July
7, 2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Instron
Corp. v. Kaner, FA 768859 (Nat. Arb.
Forum Sept. 21, 2006) (finding that the respondent was not commonly known by
the <shoredurometer.com> and <shoredurometers.com> domain names
because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic
Equip’t as the registrant of the disputed domain name and there was no other
evidence in the record to suggest that the respondent was commonly known by the
domain names in dispute).
With regards to the <citybank.org> domain name, the Panel finds that Respondent
does have rights and legitimate interests under Policy ¶ 4(a)(ii), as the
disputed domain name is comprised of common, generic terms that are not
exclusively associated with Complainant and Complainant’s business. Thus, the Panel finds that Respondent has
rights and legitimate interests in the disputed domain name by virtue of the
composition of the disputed domain name itself.
See Energy Source Inc. v.
Your Energy Source, FA 96364
(Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent
has rights and legitimate interests in the domain name where “Respondent has
persuasively shown that the domain name is comprised of generic and/or
descriptive terms, and, in any event, is not exclusively associated with
Complainant’s business”); see also Coming Attractions, Ltd. v.
Comingattractions.com, FA 94341 (Nat. Arb. Forum
Respondent is using the <citifield.com>, <citiadvantage.com>, <citibankcanada.com>, <citicardscom.com>, <citicorpjobs.com>, and <citifinicial.com> domain names to redirect Internet users websites containing hyperlinks to various third-party websites, some of which are in direct competition with Complainant. Thus, Respondent’s use is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) since Respondent is not offering any goods or services for sale. See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”). Respondent may receive click-through fees for each redirected Internet user, and is certainly exploiting Complainant’s marks to advertise various other businesses. Therefore, Respondent’s use of the <citifield.com>, <citiadvantage.com>, <citibankcanada.com>, <citicardscom.com>, <citicorpjobs.com>, and <citifinicial.com> domain names also does not constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied with regards to the <citifield.com>, <citiadvantage.com>, <citibankcanada.com>, <citicardscom.com>, <citicorpjobs.com>, and <citifinicial.com> domain names.
Having failed to establish that Respondent lacks rights and legitimate interests with regards to the <citybank.org> domain name, the Panel finds that Policy ¶ 4(a)(ii) has not been satisfied with regards to this domain name.
Respondent is presumably profiting through the accrual of click-through fees for the hyperlinks that are displayed on the websites that resolve from the <citifield.com>, <citiadvantage.com>, <citibankcanada.com>, <citicardscom.com>, <citicorpjobs.com>, and <citifinicial.com> domain names. Additionally, the confusingly similar nature of these domain names to Complainant’s marks creates the possibility that Internet users may be confused as to Complainant’s source, sponsorship, affiliation or endorsement of the disputed domain names and resulting websites. Thus, with regards to these six disputed domain names, the Panel finds evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also 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.’”).
Moreover, as the <citifield.com>, <citiadvantage.com>, <citibankcanada.com>,
<citicardscom.com>, <citicorpjobs.com>, and <citifinicial.com>
domain names resolve to websites that contain hyperlinks that are in
competition with Complainant, and thus may disrupt Complainant’s business, the
Panel finds evidence of bad faith registration and use under Policy ¶
4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum
July 24, 2006) (finding that the respondent engaged in bad faith registration
and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to
operate a commercial search engine with links to the products of the
complainant and to complainant’s competitors, as well as by diverting Internet
users to several other domain names); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied with regards to the <citifield.com>, <citiadvantage.com>, <citibankcanada.com>, <citicardscom.com>, <citicorpjobs.com>, and <citifinicial.com> domain names.
Having failed to satisfy Policy ¶ 4(a)(ii) with regards to the <citybank.org> domain name, the Panel is not required to analyze Policy ¶ 4(a)(iii) with regards to this disputed domain name, and chooses not to do so.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citifield.com>, <citiadvantage.com>, <citibankcanada.com>, <citicardscom.com>, <citicorpjobs.com>, and <citifinicial.com> domain names be TRANSFERRED from Respondent to Complainant.
With regards to the <citybank.org> domain name, the Panel
finds that Complainant has failed to establish all three elements required
under the ICANN Policy, and concludes that relief shall be DENIED.
The <citybank.org> domain name shall remain under control of RESPONDENT.
James A. Carmody, Esq., Panelist
Dated: March 20, 2008
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