Citigroup Inc. v. Citilend Mortgage Company
Claim Number: FA0811001233601
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 <citilend.com>, registered with Godaddy.com, Inc.
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.
Joel M.Grossman, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 13, 2008.
On November 11, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <citilend.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 November 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 3, 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 by e-mail.
The Response was received in electronic form on November 14, 2008, however a hard copy was not received prior to the Response deadline. Thus, the Response was deemed deficient by the Forum pursuant to ICANN Rule 5.
On November 19, 2008 an Additional Submission was timely submitted by Complainant.
On November 20, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant first asserts that it has rights in the famous “CITI” mark, noting that it has valid registered trademarks dating back to 1981. Complainant further asserts that the domain name is identical to, or confusingly similar to its mark, noting that the domain name wholly incorporates the mark, and merely adds the generic term “lend” to the mark. Complainant next asserts that Respondent has no rights or legitimate interests in the domain name. Complainant points out that Respondent is not commonly known by the domain name, and has never used the name for the bona fide offering of goods or services. In addition, Complainant asserts that it has never granted any license or other authorization to Respondent to use its mark. Finally, Complainant asserts that the domain name was registered and is being used in bad faith. In support of this contention Complainant states that Respondent knew, or should have known, of the existence of its famous mark at the time it registered the domain name. Moreover, Complainant asserts that Respondent used a domain name which is confusingly similar to Complainant’s famous mark to divert Internet users to Respondent’s website, which provided links to Complainant’s competitors.
As a preliminary matter, the Panel notes that Respondent’s Response is
deficient in that a hard copy was not received by the deadline for Response.
The Panel determines to accept the Response despite this deficiency, and to
rule on the merits of this case. See
Strum v. Nordic Net
In terms of the substance of the Response, Respondent does not address the issues of confusing similarity or legitimate rights or interest. Respondent does assert that it did not register the domain name in bad faith since it was not aware of Complainant’s mark at the time it began its business in 1998. Respondent notes that it is now aware of Complainant’s trademark and has ceased doing business under the domain name. However, Respondent states that it wishes to continue to utilize the domain name as a website to list Complainant’s stock price, with no reference to Respondent. Respondent contends that it would be harmed if the domain name were to be transferred to Complainant, as Complainant would then be able to “harvest new business” from Respondent’s former customers who may be trying to locate Respondent for business purposes. Respondent states that it would be willing to transfer the domain name to Complainant if Complainant would agree in writing to shut it down and not use it for any business purpose.
C. Additional Submissions
In its Additional Submission Complainant notes that in its Response the Respondent does not dispute that the domain name is confusingly similar to Complainant’s mark, and that the Response further admits that Respondent is not doing business under the domain name. Complainant asserts that despite Respondent’s statement that it has acted in good faith, it has not. Complainant’s mark is well known and the Respondent had at least constructive knowledge of the mark. Additionally, Complainant contends that the Response itself shows Respondent’s bad faith, as Respondent wishes to keep Complainant from using its own mark in commerce.
The Panel finds (1) that the domain name is identical or confusingly similar to a mark in which Complainant has established rights; (2) that Respondent has no rights or legitimate interests in the domain name; and (3) that the domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 asserts, and Respondent does not dispute, that the domain name wholly incorporates the mark, and merely adds the generic term “lend.” The Panel finds that under such circumstances the domain name is identical to or confusingly similar to Complainant’s mark. See Sony Kabushiki Kaisha v. Inja, Kil D2000-1409 (WIPO Dec. 9, 2000). The Panel finds that the CITI mark is distinctive, especially in light of the spelling “citi” instead of “city,” and given Complainant’s fame as a financial services company, the public would be confused, and might assume that the domain name “citilend” was a lending company affiliated with Complainant. The Panel also finds that Complainant’s rights in the mark are confirmed by its registered trademarks dating back to 1981.
The Panel notes that Complainant first must
make a prima facie case that Respondent
lacks rights or legitimate interests in the name before the burden shifts to
Respondent to establish such rights. See
Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (
Respondent asserts that when it started its business in 1998 it was unaware of Complainant’s mark. Respondent does not specifically assert that when it registered the domain name in 2003 it was still unaware of the mark. Even assuming that Respondent were to assert that at the time it registered the domain name in 2003 it was not aware of the mark, such assertion would not prevent a finding of bad faith registration. Complainant does not have to prove Respondent’s actual knowledge of its mark at the time of registration. See Digi Int’l v. DDI Sys. , FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith when a Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”). Moreover, Complainant asserts, and Respondent does not deny, that for a period of time Respondent was using the confusingly similar domain name to attract Internet users to its website, which had links to Complainant’s competitors. Such diversion shows use of the domain name in bad faith. See S. Exposure v. S. Exposure, Inc. FA 94864 (Nat. Arb. Forum July 18, 200). Thus, the Panel finds that the domain name was registered and was being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <citilend.com> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Esq., Panelist
Dated: December 1, 2008
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