national
arbitration forum
DECISION
Citigroup Inc. and Primerica Financial Services, Inc. v. James Wright
Claim Number: FA0810001229609
PARTIES
Complainant is Citigroup Inc. and Primerica Financial Services, Inc. (“Complainant”), represented by Christopher
J. Willis, of Rogers & Hardin LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <primericaaffiliates.com>, registered with 1 & 1 Internet Ag.
PANEL
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.
James A. Crary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2008.
On October 17, 2008, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <primericaaffiliates.com> domain name is registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 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@primericaaffiliates.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 18, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <primericaaffiliates.com> domain name is confusingly similar to Complainant’s PRIMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <primericaaffiliates.com> domain name.
3. Respondent registered and used the <primericaaffiliates.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Citigroup, was formed on October 8, 1998 and its subsidiary, Primerica, was formed in 1997. Complainant serves over six million clients by providing, through its affiliates, life insurance, mortgage and debt consolidation loans, purchase money loans, securities, long term care insurance, retirement savings vehicles, and programs to fund education expenses. Complainant holds a registration of its PRIMERICA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,501,588 issued August 23, 1988).
Respondent registered the <primericaaffiliates.com> domain name on May 11, 2008. The disputed domain name resolves to a website that displays the message: “WE ARE NOT AFFILIATED WITH PRIMERICA.COM THIS DOMAIN NAME IS FOR SALE HOWEVER TO CONTACT THE DOMAIN OWNER CALL…”
DISCUSSION
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.
Identical and/or Confusingly Similar
The Panel finds that Complainant has sufficiently established rights in the PRIMERICA mark under Policy ¶ 4(a)(i) because it holds a registration of the mark with the USPTO. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <primericaaffiliates.com>
domain name contains Complainant’s entire mark and merely adds the generic term
“affiliates.” The Panel finds that the
addition of this generic term does not distinguish the disputed domain name
from Complainant’s mark for the purposes of confusing similarity under Policy ¶
4(a)(i). See Oki
Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks”); see also Am.
Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum
Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark
and merely added the descriptive terms “traffic school,” “defensive driving,”
and “driver improvement” did not add any distinctive features capable of
overcoming a claim of confusing similarity).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the <primericaaffiliates.com> domain name. Then, the burden shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).”).
Respondent’s <primericaaffiliates.com> domain name resolves to a website displaying a message offering to sell the disputed domain name. The Panel finds that this diversion of Internet users is 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Furthermore, Respondent’s WHOIS information indicates that
Respondent is not commonly known by the <primericaaffiliates.com>
domain name and Respondent has not provided any evidence to suggest
otherwise. Accordingly, the Panel finds
that Respondent is not commonly known by the <primericaaffiliates.com>
domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one 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 without demonstrable evidence to support
the assertion that a respondent is commonly known by a domain name, the
assertion must be rejected).
Finally, the Panel finds that the
aforementioned offer of sale is evidence of a lack of rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii). See
Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat.
Arb. Forum May 27, 2003) (holding that under the circumstances, the
respondent’s apparent willingness to dispose of its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name); see also Hewlett-Packard Co. v.
High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum
July 31, 2000) (finding no rights or legitimate interests where the respondent
registered the domain name with the intention of selling its rights).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s
<primericaaffiliates.com>
domain name resolves to a website that displays a message that makes a general
offer of sale of the disputed domain name.
The Panel finds that this general offer of sale of the disputed domain
name is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar.
16, 2000) (finding bad faith where the respondent offered domain names for
sale).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <primericaaffiliates.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: December 2, 2008
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