Citadel Investment Group, L.L.C. v. Eli Rosenberg and Etro Holdings, LLC.
Claim Number: FA0810001230838
Complainant is Citadel
Investment Group, L.L.C. (“Complainant”), represented by Carrie L. Kiedrowski, of Jones Day,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citadelequities.com> and <citadelinvestments.com>, registered with Network Solutions, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 27, 2008.
On October 24, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <citadelequities.com> and <citadelinvestments.com> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 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, 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 November 25, 2008 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citadelequities.com> and <citadelinvestments.com> domain names are confusingly similar to Complainant’s CITADEL mark.
2. Respondent does not have any rights or legitimate interests in the <citadelequities.com> and <citadelinvestments.com> domain names.
3. Respondent registered and used the <citadelequities.com> and <citadelinvestments.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citadel Investment Group, L.L.C., is an alternative investment firm that retains 1,200 professionals worldwide and $20 billion in capital. Complainant owns the registration to the CITADEL mark (Reg. No. 2,812,459 issued Feb. 10, 2004). Complainant also owns the <citadelgroup.com> domain name.
Respondent registered the disputed <citadelequities.com> and <citadelinvestments.com> domain names on March 2, 2008 and June 26, 2008. The disputed domain names previously resolved to click-through websites displaying links for Complainant’s direct competitors. Thereafter, the disputed domain names resolved to the <networksolutions.com> domain name. Respondent also offered to sell the disputed domain names to Complainant for $5,000.00.
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 asserted evidence of its trademark registration for the CITADEL mark with the USPTO. The Panel finds that Complainant has sufficient rights in its CITADEL mark through these trademark registrations pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority).
Respondent’s disputed <citadelequities.com> and <citadelinvestments.com> domain names differ from Complainant’s CITADEL mark in the following ways: (1) the generic top-level domain “.com” has been added; and (2) the descriptive and generic terms “equities” or “investments” have been added. The Panel finds that the addition of a generic top-level domain is irrelevant under Policy ¶ 4(a)(i). 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). The Panel also notes that the added terms describe or relate to Complainant’s investment activities, and therefore the disputed domain names are not sufficiently distinguished from the mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). 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 Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant has set forth sufficient allegations supporting a prima facie case, and thus Respondent bears the burden of demonstrating that it does have rights or legitimate interests pursuant to 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 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.”).
Respondent’s registrant listing in the WHOIS information is
“Eli Rosenberg and Etro Holdings, LLC.”
Without any additional evidence to contradict this finding, the Panel
therefore holds that Respondent is not, nor has ever been, commonly known by
the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
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); see also
Respondent’s disputed domain names previously resolved to click-through web pages advertising Complainant’s direct competitors via hyperlinks, presumably for Respondent’s commercial benefit. At some point, the disputed domain names were altered so that they resolved to the <networksolutions.com> domain name. The Panel has no other evidence before it that would indicate any other use, and therefore finds that Respondent has failed in creating a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant has set forth evidence that indicates Respondent offered to sell the disputed domain names to Complainant for $5,000.00, or in return for investment advisory services. Given the usage of the disputed domain names as discussed in the previous paragraph, the Panel notes that Respondent likely primarily intended to receive some sort of remuneration in-excess of its registration costs. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
As discussed above, Respondent has sought to transfer the
disputed domain names to Complainant in return for monies in-excess of
registration costs and/or investment advisory services. In any regard, the Panel considers Respondent
to have registered and used the disputed domain names in bad faith under Policy
¶ 4(b)(i) due to its primary intent to receive
remuneration for the disputed domain names from Complainant. See Vanderbilt
The Panel also finds that Respondent’s registration and
former usage of the disputed domain names to operate an Internet billboard of
sorts for Complainant’s direct competitors disrupted Complainant’s business and
therefore constituted bad faith under Policy ¶ 4(b)(iii). See
Finally, the Panel finds that Respondent’s commercial gain
from the receipt of referral fees via the click-through websites was
intentional and designed to engender confusion among Internet users as to
Complainant’s affiliation and sponsorship of the disputed domain names and
corresponding websites. Therefore, the
Panel finds that Respondent both registered and used the disputed domain names
in bad faith under Policy ¶ 4(b)(iv). See
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <citadelequities.com> and <citadelinvestments.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 2, 2008
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