Citizens Financial Group, Inc. and Charter One Financial, Inc. v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA0906001268301
Complainant is Citizens
Financial Group, Inc. and Charter
One Financial, Inc. (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina,
USA. Respondent is Transure Enterprise Ltd c/o
Host Master (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <citizensbankcardservices.com> and <chartereonebank.com>, registered with Above, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2009.
On June 17, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <citizensbankcardservices.com> and <chartereonebank.com> domain names are registered with Above, Inc. and that Respondent is the current registrant of the names. Above, Inc. has verified that Respondent is bound by the Above, 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 June 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 13, 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@citizensbankcardservices.com and postmaster@chartereonebank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <citizensbankcardservices.com> domain name is confusingly similar to Complainant’s CITIZENS BANK mark. Respondent’s <chartereonebank.com> domain name is confusingly similar to Complainant’s CHARTER ONE mark.
2. Respondent does not have any rights or legitimate interests in the <citizensbankcardservices.com> and <chartereonebank.com> domain names.
3. Respondent registered and used the <citizensbankcardservices.com> and <chartereonebank.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Citizens Financial Group, Inc. (“Citizens”) and Charter One
Financial, Inc., (“Charter One”) (collectively “Complainant”) are the owners of
the CITIZENS BANK and CHARTER ONE marks.
Citizens is a leading provider of financial services in the
Respondent registered the <citizensbankcardservices.com> and <chartereonebank.com> domain names on March 24, 2009 and March 22, 2009, respectively. The disputed domain names each resolve to a website displaying commercial links, including links to the websites of competing financial service providers.
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.
Complainant holds numerous trademark registrations for both the CITIZENS BANK and CHARTER ONE marks with the USPTO. Thus, the Panel finds that Complainant has established rights in its CITIZENS BANK and CHARTER ONE marks pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <citizensbankcardservices.com> domain name is confusingly similar to Complainant’s CITIZENS BANK mark. The disputed domain name contains Complainant’s mark in its entirety with the addition of the descriptive phrase “card services” and the affixation of the generic top-level domain “.com.” The Panel finds that the addition of a phrase that describes Complainant’s business fails to alleviate the confusing similarity between Respondent’s <citizensbankcardservices.com> domain name and Complainant’s CITIZENS BANK mark. Additionally, top-level domains are irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that Respondent’s <citizensbankcardservices.com> domain name is confusingly similar to Complainant’s CITIZENS BANK mark under Policy ¶ 4(a)(i).
Complainant further contends that Respondent’s <chartereonebank.com> domain name is confusingly similar to its CHARTER ONE mark. The disputed domain name fully incorporates Complainant’s CHARTER ONE mark with the addition of the letter “e” after the word “CHARTER,” the addition of the descriptive term “bank,” and the affixation of the generic top-level domain “.com.” The Panel finds that these alterations fail to distinguish Respondent’s <chartereonebank.com> domain name from Complainant’s CHARTER ONE mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the <wellfargobank.com> domain name is confusingly similar to the WELLS FARGO mark, because altering the mark by one letter and adding “…the word ’bank,’ a word that both describes the type of business that Complainant engages in and is included in its <wellsfargobank.com> domain name, does not alleviate any confusing similarity.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that Respondent’s <chartereonebank.com> domain name is confusingly similar to Complainant’s CHARTER ONE mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). Respondent has failed to respond to the allegations against it. Consequently, the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”). The Panel will however, examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
The disputed domain names each resolve to a website displaying click-through links that further resolve to the websites of Complainant’s competitors. Complainant contends that Respondent’s use of confusingly similar domain names to redirect Internet users to websites displaying links to competing businesses is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. The Panel presumes that Respondent is profiting through the generation of click-through fees and finds that Respondent has failed to use the disputed domain names in connection with 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). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant 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)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites 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)).
Furthermore, Complainant contends that Respondent is not
commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). The WHOIS information lists the registrant as
“Transure Enterprise Ltd c/o Host Master.”
This information suggests that Respondent is not commonly known by the <citizensbankcardservices.com>
and <chartereonebank.com>
domain names. Moreover, there is no
evidence in the record to suggest otherwise.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain names under Policy ¶ 4(c)(ii).
See Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was
not commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using
the disputed domain names to resolve
to a website displaying click-through links promoting businesses that are in
direct competition with Complainant. The
Panel finds that this diversion of Internet users to Respondent’s website
through the confusingly similar disputed
domain names disrupts Complainant’s business and constitutes bad faith
registration and use under Policy ¶ 4(b)(iii).
See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iii).”); 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)).
Furthermore, Respondent is using the disputed domain names
to presumably collect click-through fees.
The Panel finds that Respondent’s use of the confusingly similar domain names creates a likelihood of
confusion as to Complainant’s affiliation with the disputed domain names. Respondent is also likely profiting from that
confusion through the presumed receipt of fees.
Therefore, the Panel finds that Respondent’s actions constitute bad
faith registration and use under 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 Univ. of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006)
(“Respondent is using the disputed domain name to operate a website which
features links to competing and non-competing commercial websites from which
Respondent presumably receives referral fees.
Such use for Respondent’s own commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant has
satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citizensbankcardservices.com> and <chartereonebank.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 30, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum