Citadel Investment Group L.L.C., and its related entity, KCG IP Holdings, LLC v. Dale Roberts
Claim Number: FA1006001327793
Complainant is Citadel Investment Group L.L.C., and its related
entity, KCG IP Holdings, LLC (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <citadel-grp.com>, registered with ABACUS AMERICA, INC. DBA NAMES4EVER.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2010.
On June 4, 2010, ABACUS AMERICA, INC. DBA NAMES4EVER confirmed by e-mail to the National Arbitration Forum that the <citadel-grp.com> domain name is registered with ABACUS AMERICA, INC. DBA NAMES4EVER and that Respondent is the current registrant of the name. ABACUS AMERICA, INC. DBA NAMES4EVER has verified that Respondent is bound by the ABACUS AMERICA, INC. DBA NAMES4EVER 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 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@citadel-grp.com. Also on June 15, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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" through submission of a Written Notice, as defined in Rule 1. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citadel-grp.com> domain name is confusingly similar to Complainant’s CITADEL mark.
2. Respondent does not have any rights or legitimate interests in the <citadel-grp.com> domain name.
3. Respondent registered and used the <citadel-grp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citadel Investment Group L.L.C., was founded in 1990 and is one of the world’s largest alternative investment institutions. Complainant uses the CITADEL mark under licenses from its related entity, Complainant, KCG IP Holdings, LLC. Hereinafter, these entities will be collectively referred to as Complainant. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CITADEL mark (e.g., 2,812,459 registered on February 10, 2004).
Respondent, Dale Roberts, registered the <citadel-grp.com> domain name on May 24, 2010. The disputed domain name previously resolved to a website that prominently displayed Complainant’s mark and offered competing financial services. It currently resolves to the registrar’s advertising page.
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 asserts rights in the CITADEL mark through its
numerous registration of the mark with the USPTO (e.g., 2,812,459 registered on February 10, 2004). The Panel finds these registrations
sufficiently establish Complainant’s rights in the CITADEL mark pursuant to
Policy ¶ 4(a)(i).
Complainant contends Respondent’s <citadel-grp.com> domain name is confusingly similar to
its CITADEL mark. Complainant argues the
addition of a hyphen, the letters “grp,” and the generic top-level domain
(“gTLD”) “.com” do not sufficiently distinguish Respondent’s disputed domain
name from Complainant’s mark. The Panel
agrees. See Health Devices Corp. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first show that Respondent has no rights and legitimate interests in the disputed domain name. The burden shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain names under the guidelines in Policy ¶ 4(c). Prior Panels have presumed that a Respondent has no rights or legitimate interests in the disputed domain name if Respondent fails to submit a Response. See 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).”). Although Respondent failed to respond, the Panel will analyze the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant states it has not authorized or licensed Respondent to use its mark in any way. Furthermore, the WHOIS information lists “Dale Roberts” as the registrant of the <citadel-grp.com> domain name. Without evidence to the contrary, the Panel finds 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 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).
Complainant claims the <citadel-grp.com>
domain name previously resolved to a website that offered competing
financial services. A screen shot of the
resolving website shows Complainant’s CITADEL mark prominently displayed
throughout Respondent’s site. The
website also claims to provide “a full range of financial solutions and
advisory services.” The Panel finds Respondent’s
attempt to pass itself off as Complainant’s official website indicates a lack
of rights and legitimate interests under Policy ¶ 4(a)(ii).
See Am. Int’l Group, Inc. v.
Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that
the respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name);
see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the
respondent is not using the <mortgageresearchcenter.org> domain name for
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).”).
Complainant alleges Respondent’s <citadel-grp.com> domain name currently resolves to the registrar’s advertising page. The Panel finds Respondent’s failure to make active use of the disputed domain names does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s disputed domain name
diverts Internet users seeking its products and services to Respondent’s
competing website. The Panel finds this
use disrupts Complainant’s business, which is evidence of 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
As
previously discussed, Respondent’s disputed domain name is confusingly similar
to Complainant’s CITADEL mark. The
resolving website also previously displayed Complainant’s mark and offered
services that directly competed with Complainant’s financial services. The Panel infers that Respondent attempted to
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s website or services on its
website. Therefore, the Panel finds this
behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iv). See Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on
its website and offering identical services as those offered by the
complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad
faith where the respondent's use of the domain name at issue to resolve to a
website where similar services are offered to Internet users is likely to
confuse the user into believing that the complainant is the source of or is
sponsoring the services offered at the site).
The Panel finds Respondent’s previous attempt to pass itself off as Complainant’s official website also supports a finding of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Finally, the Panel finds Respondent’s current inactive use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds 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 <citadel-grp.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 19, 2010
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