Citigroup Inc. v. Domain Deluxe c/o Domain Administrator
Claim Number: FA0811001233379
Complainant is Citigroup Inc. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citywarrants.com>, registered with Nameview, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a worldwide financial services company.
Complainant has registered
the CITIWARRANTS mark in more than ten countries, including Respondent’s
place of residence,
Respondent registered the <citywarrants.com>
domain name on
The disputed domain name resolves to a website promoting various goods and services, through pop-up advertisements and links to financial services, including stock tickers and mortgage loans, that directly compete with the business of Complainant.
Respondent’s <citywarrants.com> domain name is confusingly similar to Complainant’s CITIWARRANTS mark.
Respondent does not have any rights to or legitimate interests in the <citywarrants.com> domain name.
Respondent registered and uses the <citywarrants.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant must first establish that it has rights pursuant
to Policy ¶ 4(a)(i)in the mark it asserts. There is no dispute as to Complainant’s
allegation that it has registered the CITIWARRANTS mark in several
jurisdictions, thus establishing its rights in the mark. See Honeywell Int’l Inc.
v. r9.net, FA 445594 (Nat. Arb. Forum
On the point of identity or confusing similarity, the <citywarrants.com> domain name
consists of a mistyped variation of the CITIWARRANTS mark, exchanging “I” for
“Y,” and the generic top-level domain (“gTLD”) “.com.” The gTLD is necessary for all domain names,
and is therefore irrelevant to a Policy ¶ 4(a)(i)
analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
As to the remainder of the disputed domain name, the <citywarrants.com> domain name is
phonetically identical to Complainant’s CITIWARRANTS mark. We therefore conclude that the disputed
domain name is substantively identical to Complainant’s CITIWARRANTS mark
pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co.
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii)
is on Complainant to show that Respondent does not have any rights to or
legitimate interests in the disputed domain name. Once Complainant has made out
a prima facie case, the burden shifts
to Respondent to show that it does have such rights or interests, whether
pursuant to the directions provided in Policy ¶ 4(c) or otherwise. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
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.
Complainant has presented a prima facie case.
Respondent, having thus acquired the burden to proceed, has failed to
respond to the Complaint. Accordingly, we are entitled to conclude that
Respondent has no rights to or interests in the contested domain name
cognizable under the Policy. See G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum
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).
See also CMGI, Inc. v.
Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s
failure to produce requested documentation supports a finding for the
complainant); further see Law Soc’y of Hong Kong v. Domain Strategy, Inc.,
A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.
However, we will nonetheless examine the record before us to determine if there is any basis for concluding that Respondent has rights to or interests in the contested domain sufficient to meet the requirements of Policy ¶ 4(c).
We begin by observing that there
is no evidence to indicate that Respondent is commonly known by the <citywarrants.com>
Rather the pertinent WHOIS information identifies Respondent as “Domain
Deluxe c/o Domain Administrator.” Therefore
Respondent has not established rights or legitimate interests in its domain
name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
We also note that there is no dispute as to Complainant’s
allegation to the effect that the disputed domain name resolves to a website with
links and pop-up advertisements promoting various goods and services, including
stock tickers and mortgage loans, that compete with the
business of Complainant. Using a domain
name that is identical or confusingly similar to another’s mark to divert
Internet users to competing websites is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor 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
We further note that “typo-squatting” occurs when a
respondent purposefully includes typographical errors in the domain name to
divert Internet users who commit the expected typographical error. The <citywarrants.com>
domain name takes advantage of Internet users who are looking for Complainant’s
<citiwarrants.com> domain name, but type a “Y” instead of an “I.” We conclude that
Respondent has engaged in typosquatting by slightly misspelling the mark here
in issue. Typo-squatting is further
evidence that Respondent does not have rights to or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Black & Decker
Corp. v. Khan, FA 137223 (Nat. Arb. Forum
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent does not deny that it is using the disputed
domain name to direct Internet users to its website, and thereby to those of
Complainant’s business competitors. We may
infer that this is done for the purpose of disrupting Complainant’s business to
favor Complainant’s competitors who advertise with Respondent. This is evidence of bad faith registration
and use of the contested domain name pursuant to Policy ¶ 4(b)(iii).
See Travant Solutions, Inc. v.
Cole, FA 203177 (Nat. Arb. Forum
Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii)[and] (iv).
Given the substantive identity of the <citywarrants.com> domain name to
Complainant’s CITIWARRANTS mark, Internet users are likely to be induced to
believe that the disputed domain name resolves to websites associated with or
sponsored by Complainant. Respondent is presumably
attempting to profit from this misconception by collecting “click-through fees”
for each Internet user thus misled. This is further evidence of bad faith
registration and use of the disputed domain pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum
Furthermore, Respondent’s use of the illicit technique of typosquatting
is also evidence that Respondent registered and is using the <citywarrants.com> domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum
Typosquatting,[sic]itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
See also Dermalogica, Inc.
v. Domains to Develop, FA 175201 (Nat. Arb. Forum
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <citywarrants.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 5, 2009
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