Citadel Investment Group L.L.C. v. Aakruti Creations c/o Rashmi
Claim Number: FA0905001260581
PARTIES
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 <citadelmall-financials.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com (the “Disputed Domain Name”).
PANEL
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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 4, 2009.
On May 5, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <citadelmall-financials.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that the Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 May 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 1, 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@citadelmall-financials.com by e-mail.
A Response was received on May 26, 2009. However because this Response was not received in hard copy the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule 5.
On
June 5, 2009, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a financial services company employing more than one thousand professionals in offices worldwide. Its investors include endowments, pension funds, foundations and other institutional investors, as well as high net worth individuals. It has been in operation since 1990.
Complainant owns a number of trademark registrations for the CITADEL trademark (collectively “Complainant’s Trademarks”):
Indian registration number 1,317,373 in International Class 36 for financial services; and
Indian registration number 1,317,374 (“device”) in International Class 36 for financial services.
Respondent registered the Disputed Domain Name on April 3, 2009.
Confusing Similarity
The Disputed Domain Name is confusingly similar to Complaint’s Trademarks because it fully incorporates the entirety thereof and merely adds the descriptive element “financial,” which is a common generic term in Complaint’s industry, and the generic term “mall.”
No Rights or Legitimate Interests
Respondent has never used any trademark or service mark similar to the Disputed Domain Name by which it may have come to be known, other than the infringing use which is the subject of this complaint.
Respondent has never operated any bona fide or legitimate business under the Disputed Domain Name and is not making a protected non-commercial or fair use of the Disputed Domain Name.
Respondent is using the Disputed Domain Name to disrupt Complainant’s business and to compete with Complainant by way of a confusingly similar domain name.
Respondent undoubtedly had actual knowledge of Complainant and Complainant’s Trademarks at the time it registered the Disputed Domain Name. This actual knowledge arises from the previous case under the Policy involving the same parties as are involved herein, which was decided before Respondent registered the Disputed Domain Name, Citadel Investment Group L.L.C v. Aakruti Creations c/o Rahmi, FA 125036 (Nat. Arb. Forum Mar. 31, 2009). In this prior matter, the panel ordered transfer of the domain name <citadel-financials.com>.
Bad Faith
At all relevant times, Respondent knew about Complainant’s Trademarks.
Given the considerable registration and/or use of Complainant’s Trademarks, Internet users are likely to be induced to believe that the Disputed 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.
B. Respondent
The Respondent is a website
designer whose client is Citadel Mall Financial Services Pvt Ltd, located in
FINDINGS
Complainant is the owner of Complainant’s Trademarks.
Respondent is the registrant and owner of the Disputed Domain Name.
Respondent’s name as stated in the WHOIS information of the registrar is “Rashmi” at “Aakruti Creations.”
At the time Respondent registered the Disputed Domain Name, it was aware of Complainant and Complainant’s Trademarks.
Respondent has used the Disputed Domain Names to compete with Complainant with respect to Complainant’s business, which is financial services.
DISCUSSION
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.
Preliminary Issue #1:
Identity of Respondent
On May 26, 2009, the National Arbitration Forum (“Provider”) received the noted email from “rashmi thakur” at rashmi@aakruticreations.com (referenced above as the “website designer”). In this email, Rashmi claimed not to be the registrant of the Disputed Domain Name. Rather, he asserted, the registrant is Citadel Mall Financial Services PVT Ltd.
As noted above, the Provider confirmed the identity of the registrant of the Disputed Domain Name with the registrar thereof. The WHOIS information from said registrar listed the registrant of the Disputed Domain Name as “Rashmi” at “Aakruti Creations,” rashmi@aakruticreations.com.
The Policy provides the following definitions under Rule 1 (among others):
-Respondent means the holder of a domain-name registration…; and
-Registrar means the entity with which the Respondent has registered a domain name...
From these definitions this Panel finds that the Respondent is Rashmi, and notice of the complaint by the Provider pursuant to Rule 2 was properly directed to him. His reply is the official response for purposes of the Policy and this action.
Preliminary Issue #2:
Deficient Response
Respondent’s response was not submitted in hard copy, which is in violation of Rule 5. As such, it was deficient, which places Respondent is a default posture, and this Panel is therefore permitted to draw all appropriate inferences stated in the complaint. See Six Continents Hotels, Inc. v. Norwak, D2003-022 (WIPO Mar. 4, 2003)(holding that the respondent’s failure to submit a hard copy of the response and its failure to include evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint.)
Even if this Panel accepted Respondent’s response, it would make no difference as the Respondent’ response did not address the substance of the complaint.
Complainant has established its trademark rights to Complainant’s Trademarks by virtue of its several trademark registrations. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007)(“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy 4(a)(i)”).
For purposes of
making the requite comparison, generic top-level domains, dashes, and other
trivial content is ignored. See Isleworth Land Co. v. Lost in Space, SA FA 117330 (Nat.
Arb. Forum Sept. 27, 2002)(“[I]t is a well
established principle that generic top-level domain are irrelevant when
conducting a Policy ¶4(a)(i) analysis.”); see also Heath Devices Corp. v.
Whether additional,
non-trivial content creates a meaningful distinction depends on whether the
additional content conceptually leads back to the Complainant and Complainant’s
Trademarks. See
In the present action, the non-trivial additional content within the Disputed Domain Name includes both the words “mall” and “financials.” The later, “financials,” does lead back to the Complainant and Complainant’s Trademarks in that Complainant is in the financial services industry and Complaint’s Trademarks are for financial services. The former, the word “mall,” is neutral in this regard, but at the same time it is placed between the words “citadel” and “financials” and does not lessen the impact of the more dominant word “financials.”
As such, this Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s Trademarks, and Complainant has established this element of the Policy.
For purposes of the analysis under
Policy ¶ 4(a)(ii), Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
Disputed Domain Name, and then the burden shifts to Respondent to show it does
have rights or legitimate interests. See
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 UDRP ¶
4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see
also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25,
2006)(“Complainant must first make a prima facie showing that Respondent does
not have rights or legitimate interest in the subject domain names, which
burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interests in the subject domain names.”).
In order to sustain its initial burden, Complainant must present facts from which this Panel could conclude that Respondent does not have rights or legitimate interests in respect to the disputed domain name, and this Panel finds that Complainant has carried its burden in this regard.
It is clear that
Respondent’s name is not “Citadel Mall Financials.” Rather, Respondent’s name
is “Rashmi,” at “AAkruti Creations,” but neither is “Citadel” or “Citadel Mall
Financials.” Respondent does allude to
the existence of another entity whose name is “Citadel Mall Financials,” but no
supporting evidence is provided, and in any case, this entity, if it does
exist, is a stranger to this action. (It
is to be noted that the willingness, or not, of this other entity to close the
website at the Disputed Domain Name is of no consequence.)
Complainant states that it has not given permission to Respondent for the use
of Complainant’s Trademarks.
Complainant further
provides screen shots of Respondent's website from which it is clear that
Respondent is marketing financial services.
As such, Respondent is using a confusingly similar domain name to
compete with Respondent, which is not a
bona fide offering of goods or services under the Policy. See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see
also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
As such, Complainant has established its initial
burden.
The burden then shifts to Respondent to establish that it
does have rights or legitimate interests in respect of the Disputed Domain
Name. However, Respondent did not
provide a substantive response and has failed to meet its burden.
As such, Complainant has established this element of the policy.
The noted screen shot of
Respondent’s website establishes that Respondent was using the Disputed Domain
Name to compete with Complaint. Further,
given the noted previous administrative action between the same two parties,
Respondent did know about Complainant and Complainant’s Trademarks at the time
it registered the Disputed Domain Name. See
Am. Univ. v. Cook,
FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain
name that incorporates another's mark with the intent to deceive Internet users
in regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of the complainant).
As such, Complainant has established this element of the policy.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citadelmall-financials.com> domain name be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed,
Panelist
Dated: June 23, 2009
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