Citigroup Inc. and Primerica Financial Services, Inc. v. Beroca Holdings B.V.I. Limited c/o Wayne Nicholas
Claim Number: FA0808001220034
Complainants are Citigroup Inc. and Primerica Financial Services,
Inc. (collectively “Complainants”),
represented by Christopher J. Willis,
of Rogers & Hardin LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <primerica.mobi>, registered with EuroDNS S.A.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on August 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 15, 2008.
On August
13, 2008, EuroDNS
On August 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 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@primerica.mobi by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 16, 2008, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.
Complainants requests that the domain name be transferred from Respondent to Complainants.
A. Complainants make the following assertions:
1. Respondent’s <primerica.mobi> domain name is identical to Complainants’ PRIMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <primerica.mobi> domain name.
3. Respondent registered and used the <primerica.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Citigroup Inc. is the owner of Complainant Primerica Financial Services, Inc., a provider of life insurance, investments and other financial products and services. Complainants together own an extensive family of trademarks and service marks comprised of or featuring the PRIMERICA mark. Complainants have registered the PRIMERICA mark with the United States Patent and Trademark Office (“USPTO”) for financial planning, securities brokerage and mutual fund investment services (Reg. No. 1,501,588 issued August 23, 1988).
Respondent’s <primerica.mobi> domain name was registered on September 26, 2006. The disputed domain name does not resolve, nor ever has, to any active website.
Complainants note numerous UDRP cases in which Respondent was previously ordered to transfer infringing domain names to the respective complainants in those cases. See, e.g., MGM Mirage v. Beroca Holdings, FA 1031948 (Nat. Arb. Forum Aug. 23, 2007); see also Akbank Turk A.S. v. Beroca Holdings B.V.I. Limited, D2008-0572 (WIPO June 23, 2008).
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 Complainants 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 Complainants have 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.
Complainants’ trademark registration with the USPTO for the PRIMERICA establishes Complainants’ rights in the mark pursuant to Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (“Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (‘USPTO’).”).
Respondent’s <primerica.mobi>
domain name contains Complainant’s PRIMERICA mark in its entirety and merely
adds the generic top-level domain (“gTLD”) “.mobi.” The Panel notes that the addition of a gTLD is
irrelevant under the Policy, and therefore concludes that the <primerica.mobi> domain name is
identical to Complainants’ mark pursuant to Policy ¶ 4(a)(i). See
Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19,
2007) (finding the <vanderbilt.mobi> domain name to be identical to the
VANDERBILT mark because it did not add anything except the generic top-level
domain “.mobi”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding
that the addition of “.mobi” was a functional change and thus the
<gwbakeries.mobi> domain name was identical to the GW BAKERIES mark under
Policy ¶ 4(a)(i)).
The Panel concludes that Complainants have satisfied Policy ¶ 4(a)(i).
Complainants allege that Respondent does not have rights or legitimate interests in the <primerica.mobi> domain name. Once Complainants make 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 Complainants have 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).
Complainants allege that Respondent is not commonly known by
the <primerica.mobi> domain
name. The WHOIS information identifies
Respondent as “Beroca Holdings B.V.I. Limited,” and Complainants have
established that Respondent is not licensed or authorized to use the PRIMERICA
mark. Thus, the Panel concludes that
Respondent is not commonly known by the <primerica.mobi>
domain name 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).
Respondent has not made any
active use of the <primerica.mobi>
domain name, and therefore cannot demonstrate that its use of the disputed
domain name constitutes either 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
Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P v.
Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20,
2005) (finding that a respondent’s non-use of a domain name that is identical
to a complainant’s mark is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bloomberg L.P. v. SC Media Servs.
& Info. SRL, FA 296583
(Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating
Complainant’s mark and is not using the <bloomberg.ro> domain name in
connection with an active website. The
Panel finds that the passive holding of a domain name that is identical to
Complainant’s mark is not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶
4(c)(iii).”).
The Panel concludes that Complainants have satisfied Policy ¶ 4(a)(ii).
Complainants note many previous UDRP cases in which Respondent was ordered to transfer infringing domain names to the respective complainants in those cases. See, e.g., MGM Mirage v. Beroca Holdings, FA 1031948 (Nat. Arb. Forum Aug. 23, 2007); see also Akbank Turk A.S. v. Beroca Holdings B.V.I. Limited, D2008-0572 (WIPO June 23, 2008). The Panel finds this constitutes a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Respondent’s failure to use the <primerica.mobi> domain name also demonstrates bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See
Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006)
(holding that the non-use of a disputed domain name for several years
constitutes bad faith registration and use under Policy ¶ 4(a)(iii)); see also Caravan Club v. Mrgsale, FA
95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use
of the domain name or website that connects with the domain name, and that
inactive use of a domain name permits an inference of registration and use in
bad faith).
The Panel concludes that Complainants have 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 <primerica.mobi> domain name be TRANSFERRED from Respondent to Complainants.
Judge Harold Kalina (Ret.), Panelist
Dated: September 30, 2008
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