Citadel Investment Group L.L.C. v. Aakruti Creations c/o Rashmi
Claim Number: FA0903001250356
Complainant is Citadel
Investment Group L.L.C. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadel-financials.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 4, 2009.
On March 3, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <citadel-financials.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that the Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 March 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 26, 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 email@example.com by e-mail.
A Response was received on March 9, 2009. However because this Response was received not in hard copy, the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule 5.
Complainant submitted an Additional Submission on March 12, 2009, which was found to be in compliance with the National Arbitration Forum’s Supplemental Rule 7.
On March 17, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Citadel was founded in 1990 and has grown into one of the world's largest alternative investment institutions. Citadel employs more than one thousand professionals worldwide and has offices worldwide.
registered the at-issue domain name on September 10, 2008 well after
Complainant began extensive marketing of its services under its marks and the
registration of its marks in both the
Complainant has not given Respondent any license, permission, or authorization by which Respondent could make any use of any of its marks. Respondent has associated the domain name with a website that offers competing financial services.
The at-issue domain name is confusingly similar to the CITADEL marks because it fully incorporates Complainant's CITADEL mark and merely adds the element "financials" which is a common generic term in Complainant's industry. The mere addition of a generic top-level domain and descriptive term or terms that have an obvious association with Complainant's business do not overcome a finding of confusing similarity under Policy ¶ 4(a)(i).
Respondent lacks rights or legitimate interest in the at-issue domain name. Respondent has never used any trademark or service mark similar to the at-issue domain name by which it may have come to be known, other than the infringing use noted herein. Respondent has never operated any bona fide or legitimate business under the at-issue domain name and is not making a protected non-commercial or fair use of the at-issue domain name. In fact, Respondent is using the at-issue domain name to disrupt Complainant's business and to unfairly compete with Complainant.
Respondent was undoubtedly aware of Complainant's marks prior to the registration of the at-issue domain name, given their considerable registration and/or use. Because Respondent had notice of the Complainant's trademark rights when registering domain names nearly identical and/or confusingly similar to those marks, Respondent has no rights or legitimate interest in the at-issue domain name.
Complainant has not granted Respondent any license, permission, or authorization by which he could own or use any domain name registrations which are confusingly similar to any of Complainant's marks.
Respondent registered and is using the at-issue domain name in bad faith. Given the considerable registration and use of the CITADEL marks, Respondent knew or should have known of such marks at all relevant times. Accordingly, Respondent had actual knowledge that the at-issue domain name, which mimics and/or incorporates Complainant's registered marks, is confusingly similar to Complainant's marks. This knowledge is more than sufficient for a finding of bad faith registration.
who registered the at-issue domain name through a
Given the considerable registration and/or use of the CITADEL Marks, Internet users are likely to be induced to believe that the at-issue domain name connects to websites associated with or sponsored by Complainant. Also, using a confusingly similar domain name to convert traffic to a commercial website is one of the four explicit examples of bad faith use found in the Policy.
In its email correspondence with National Arbitration Forum, Respondent or its agent contends as follows:
Respondent was not aware of any requirements under Rule 5. Since Citadel Mall Financial Services Pvt. Ltd. is a startup company and has had no operations since its inception in August 2007, the Managing Director of the company has already been in talks with his accountants to start the proceedings for closure of the company. The same shall be completed within 2 months.
the Complaint, considering the above scenario, Respondent
will ask its agent to close the website and domain with immediate effect. Respondent
maintains that Citadel Mall Financial Services Pvt. Ltd. is a legally
incorporated company in
Also, with reference to the domain, <citadel-financials.com> was setup just because of the availability and in no way was an attempt to duplicate or market services under CITADEL Investment groups brand name. Respondent opposes the remarks under the Complaint that the respondent was undoubtedly aware of complainant marks before registration.
Mall Financial Services Pvt. Ltd is a legally incorporated company in
Also, with reference to the domain, <citadel-financials.com> was setup just because of the availability and in no way was an attempt to duplicate or market services under CITADEL Investment groups brand name.
Any resemblance is merely coincidental. As a solution, Respondent is ready to change the domain name to <citadelmall-financials.com>.
C. Additional Submissions
Complainant submitted the following additional contentions in accordance with Rule 7 of the Supplemental Rules:
Respondent's fails to comply with certification requirements. Respondent's "Response" consists of a series of unsigned emails addressed to the NAF case manager (collectively the "Deficient Response"). The Deficient Response does not contain the certification required under UDRP Rule 5(b)(viii). Complainant requests that the Panel refuse to consider the Deficient Response. Alternatively, Complainant requests that the Panel also consider the following:
The Deficient Response fails to rebut Complainant's prima facie case. The record remains clear that (1) Complainant has legitimate trademark rights to <citadel-financials.com>; (2) the at-issue domain name is confusingly similar to Complainant's mark; (3) Respondent has no legitimate interests in the at-issue domain name; and (4) the at-issue domain name was both registered in bad faith and has been used in bad faith.
Respondent does not deny that: 1) the Complainant has legitimate trademark rights to the Offending Domain; 2) the accuracy of Respondent's asserted trademark registration rights in India and the United States; 3) that Respondent had at least constructive notice of Complainant's registration rights in India and the United States; 4) that the at-issue domain name is confusingly similar to Complainant's marks; and 5) that the at-issue domain name name was used to draw traffic to Respondent's website for commercial gain.
asserts two things that are noteworthy. First, Respondent asserts that there
exists an entity in
Respondent's own statements make it clear that no such priority exists and also makes it clear that the Respondent is not "commonly known as" the <citadel-financials.com> domain name, since a company with no operations cannot develop a reputation in its business name.
If Respondent's argument is accepted, all future respondents in UDRP proceedings need do to avoid a transfer order is form (or allege formation of) a corporation whose name consists, in part, of the mark of another. Acceptance of Respondent's arguments by the Panel would create a loophole, which would render the Policy irrelevant. The better rule is the one that has already been adopted by this Panel, namely that merely forming a corporate name does not, without more, convey any rights or legitimate interests in a domain name consisting of the validly registered marks of another.
Respondent denies that it was aware of Complainant’s marks before registration.
Tellingly, Respondent does not deny, nor could it, that it registered the
at-issue domain name through a
Further correspondence from the Respondent or its agent contends:
The at-issue domain name was booked by one of Respondent’s clients, Mr. Anuj Agarwal, Director of Citadel Mall Financial Services Pvt Ltd, address as below
Citadel Mall Financial Services Pvt Ltd
K-19, Bima Nagr CHS,
Andheri(E), Mumbai - 40069
Ph: 9870456999 / 9323410114
The website designer confirms that his client agrees that the domain name belongs to him and also is ready to close the website so there is no dispute.
Complainant has trademark rights in the at-issue domain name by virtue of registration of its CITIDEL mark with the United States Patent and Trademark Office and otherwise.
Respondent impliedly agrees to the transfer of the at-issue domain name to the Complainant.
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.”
Normally, 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.
However in certain cases, such as the instant one, a finding on each of the Paragraph 4(a)2 and 4(a)3 subparts may be dispensed with. As previously noted the Respondent makes no proper formal Response to the Complaint. The email response is defective pursuant to Rule 5. However the Panel considers the response nevertheless. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). Here the informal response indicates that the Respondent does not oppose transfer of the domain name and consents to the requested relief. While Respondent’s consent is not express, it is nonetheless implied by the Respondent’s contention that it will ask its agent to close the website and domain with immediate effect and further by the lack of any opposition to the relief requested.
would have been an easy matter for the Respondent to voice clear opposition to
the requested transfer, but there is no such opposition in the record. Simply asserting
that the Complainant is mistaken on one or more points is not the same as
opposing the requested relief. To the contrary there is no opposition to the
ultimate relief requested and the comments by Respondent further indicate its
consent to transferring the at-issue domain name to the Complainant. In cases where a Respondent consents to the
requested relief, some panels have found that such consent
obviates the need for analysis regarding the particular factors evidencing
rights and interests, and bad faith. See
Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625
(Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where
the respondent stipulated to the transfer); see also Malev Hungarian
Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13,
2004). (“In this case, the parties have
both asked for the domain name to be transferred to the Complainant . . .
Since the requests of the parties in this case are identical, the Panel has no
scope to do anything other than to recognize the common request, and it has no
mandate to make findings of fact or of compliance (or not) with the Policy.”). Additionally, in such cases these
panels have only considered whether or not the Complainant had rights in the mark claimed to be confusingly
similar to the at-issue domain name. See Citigroup Inc. v.
Complainant presents adequate evidence to show that it has exclusive
rights in the at issue domain name. The Complainant's trademark has been registered
and is in use worldwide. The
identical in sight and sound and meaning to the dominant
part of the <citadel-financials.com> domain name. The addition of the term
“financials” does not diminish the fact that domain name is substantially
similar to Complainant’s CITADEL mark. See Chanel, Inc. v. Cologne Zone, D2000-1809
“When a respondent consents to transfer … it serves little purpose to
expend the panel's and the parties resources in an exercise which will have
no impact on the ultimate
outcome of the decision process.” See majority opinion, Tokyu
Corporation v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc.D2008-1406
A Panel's first and foremost function is to determine whether or not Complainant should, or should not, be granted relief. One guiding principle of the UDRP’s abbreviated procedure is judicial economy. Judicial economy commands that a panel should directly proceed to its decision where, as here, the Respondent's consent to relief dissolves any prior dispute. It follows that a panel’s only purpose in rendering substantive Paragraph 4(a) findings is relegated to assist in determining its ultimate decision and that end alone. Advisory opinions are not authorized. Therefore too, discussion of the elements of the case that are unnecessary to decide the case is superfluous.
Respondent’s non-opposition and implied consent to the transfer of the at-issue domain name to Complainant in light of a policy preference for judicial economy directs the Panel to conclude that it is appropriate pursuant to Rule 10 to grant Complainant’s request.
The Respondent having consented to and not opposed the relief requested, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citadel-financials.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 31, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum