Citigroup Inc. v. Chen Xian Sheng
Claim Number: FA0807001218168
Complainant is Citigroup Inc. (“Complainant”), represented by Paul
D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Chen Xian Sheng (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citibankindia.com> and <citibankusana.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 30, 2008; the National Arbitration Forum received a hard copy of the Complaint July 31, 2008.
On July 30, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <citibankindia.com> and <citibankusana.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
5, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 25, 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 firstname.lastname@example.org and 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 August 28, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain names that Respondent registered, <citibankindia.com> and <citibankusana.com>, are confusingly similar to Complainant’s CITIBANK mark.
2. Respondent has no rights to or legitimate interests in the <citibankindia.com> and <citibankusana.com> domain names.
3. Respondent registered and used the <citibankindia.com> and <citibankusana.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc, is a worldwide financial services company that owns numerous trademarks with governmental trademark authorities worldwide, including the CITIBANK mark (Reg. No. 691,815 issued January 19, 1960). Complainant has expended significant resources in building the goodwill associated with its marks and has made extensive use of the marks around the world.
Respondent registered the <citibankindia.com> and <citibankusana.com> domain names April 1, 2008 and January 10, 2008, respectively. The disputed domain names resolve to corresponding websites that feature third-party links for companies that directly compete 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant’s numerous and long-standing registrations of the CITIBANK mark with various governmental trademark authorities, including the USPTO, confer sufficient rights in the mark upon Complainant under Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).
Respondent’s disputed domain names, <citibankindia.com> and <citibankusana.com>, contain in its entirety Complainant’s CITIBANK mark along with the geographic qualifiers “india" and “usa,” coupled with the letters “n” and “a,” along with the generic top-level domain “.com.” The Panel finds that none of these alterations differentiates the disputed domain names from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also Int’l Data Group, Inc. v. Maruyama & Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain name <ecomputerworld.com> is confusingly similar to the complainant’s mark, COMPUTERWORLD). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant sets forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).”).
The evidence in the record relevant to a Policy ¶ 4(c)(ii) analysis shows that Respondent is not and never has been commonly known by Complainant’s mark or the two disputed domain names. The WHOIS information lists Respondent as “Chen Xian Sheng,” and Complainant has expressly avered that Respondent has never received a license or authorization from Complainant to use the mark in any fashion. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The disputed domain names resolve to websites that feature advertisements for Complainant’s direct competitors. Complainant alleges, and the Panel so finds, that Respondent commercially benefits from this use through receipt of click-through fees. The Panel therefore finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) and has not made a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of the corresponding websites and disputed domain names to host competitive third-party advertisements constitutes disruption of Complainant’s business, and therefore evidences Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims that Respondent has created a likelihood
of confusion as to Complainant’s association or sponsorship of the disputed
domain names for commercial gain due to the confusingly similar disputed domain
names and corresponding websites. The
Panel agrees and finds that Respondent has engaged in bad faith registration
and use under Policy ¶ 4(b)(iv). See
Allianz of Am. Corp. v. Bond,
FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith
registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting
Internet users searching for the complainant to its own website and likely
profiting); see also Asbury Auto. Group,
The Panel finds that Complainant satisfied the elements of ICANN 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 <citibankindia.com> and <citibankusana.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 5, 2008.
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