Citigroup Inc. v. Stop2Shop c/o G V
Claim Number: FA0812001239070
Complainant is Citigroup
Inc. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig,
LLP,
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <citi-financial.com> and <citi-cards.com>, registered with Enom, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 22, 2008.
On December 17, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <citi-financial.com> and <citi-cards.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2009 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@citi-financial.com and postmaster@citi-cards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 2009, pursuant to Complainant's 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citi-cards.com> domain name is confusingly similar to Complainant’s CITI mark, and Respondent’s <citi-financial.com> domain name is confusingly similar to Complainant’s CITIFINANCIAL mark.
2. Respondent does not have any rights or legitimate interests in the <citi-financial.com> and <citi-cards.com> domain names.
3. Respondent registered and used the <citi-financial.com> and <citi-cards.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., is a well-known financial services company that issues credit cards and manages other financial services. Complainant registered its CITI mark on December 8, 1981 (Reg. No. 1,181,467) and its CITIFINANCIAL mark on March 16, 2004 (Reg. No. 2,951,903) with the United States Patent and Trademark Office (“USPTO”). Complainant uses both of these marks in conjunction with its business.
Respondent registered the disputed <citi-cards.com> and <citi-financial.com> domain names on August 3 and 21, 2004, respectively. Respondent used the disputed domain names to display links promoting the financial services of Complainant’s competitors until Complainant contacted the hosting company and requested that the content be disabled.
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.
In accordance with a long list of precedent on this point, the Panel finds that Complainant’s trademark registrations for the CITI and CITIFINANCIAL marks with the USPTO confer rights in the marks to Complainant for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); 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 <citi-financial.com> domain name contains Complainant’s CITIFINANCIAL mark in its entirety and merely adds a hyphen and the generic top-level domain (“gTLD”) “.com.” Previous precedent has found that the additions of a hyphen and a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. See, e.g., O.F. Mossberg & Sons, Inc. v. Thompson Dev., FA 1223025 (Nat. Arb. Forum Oct. 22, 2008) (“The Panel finds that the additions of the hyphen and gTLD are inconsequential under an analysis of the Policy.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel concludes that the <citi-financial.com> domain name is confusingly similar to Complainant’s CITIFINANCIAL mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <citi-cards.com> domain name contains Complainant’s CITI mark in its entirety and similarly adds a hyphen and the gTLD “.com.” However, this disputed domain name also adds the word “cards.” Since Complainant issues credit cards as part of its business, this descriptive term only adds to the confusing similarity of the disputed domain name. Therefore, the Panel concludes that the <citi-cards.com> domain name is confusingly similar to Complainant’s CITI mark pursuant to Policy ¶ 4(a)(i). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names as required by Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests. However, the Panel chooses to examine the record against the applicable Policy ¶ 4(c) elements before making a final determination on this point. See Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the [disputed domain] name. Thus, the burden shifts to Respondent to demonstrate that it does have such rights or interests.”); 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).
Complainant states that it has not granted Respondent any license, permission, or authorization to register a domain name containing its marks or any variations thereof. The WHOIS domain name registration information identifies Respondent as “Stop2Shop c/o G V,” which does not implicate any affiliation with the disputed domain names other than mere ownership. Therefore, the Panel concludes that Respondent is not commonly known by the <citi-financial.com> and <citi-cards.com> domain names pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 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).
Respondent used the <citi-financial.com> and <citi-cards.com> domain names to host hyperlinks promoting the financial services of Complainant’s competitors. The Panel presumes that Respondent earned click-through fees for each redirected Internet user that clicked on one of these links. Therefore, the Panel concludes that Respondent’s use of the <citi-financial.com> and <citi-cards.com> domain names constituted neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of an identical or confusingly similar domain name to operate a website displaying links to competing goods and services was 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)).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s use of the <citi-financial.com> and <citi-cards.com> domain names was meant to divert Internet users to the websites of Complainant’s competitors, and therefore had the propensity to disrupt Complainant’s business. This provides sufficient evidences of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Internet users, and certainly Complainant’s customers, were likely to be confused as to the affiliation or endorsement of Respondent’s website resolving from the <citi-financial.com> and <citi-cards.com> domain names. Respondent created this likelihood of confusion for its own commercial gain, and therefore attempted to capitalize off of the goodwill associated with Complainant’s CITI and CITIFINANCIAL marks. The Panel consequently finds that Respondent registered and used the <citi-financial.com> and <citi-cards.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citi-financial.com> and <citi-cards.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 11, 2009
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