Citigroup Inc. v. Steve Renner a/k/a Inter-Mark Corporation a/k/a Cash Cards International f/r/a CitiLynks.com
Claim Number: FA1006001329486
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 <citibusiness.org>, <citiesmart.com>, <citiesmart.net>, <citilynks.net>, <citishops.com>, and <citishops.net>, registered with eNom, Inc. (R39-LROR), ONLINENIC, INC., ENOM, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2010.
On June 12, 2010, eNom, Inc. (R39-LROR), ONLINENIC, INC., ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <citibusiness.org>, <citiesmart.com>, <citiesmart.net>, <citilynks.net>, <citishops.com>, and <citishops.net> domain names are registered with eNom, Inc. (R39-LROR), ONLINENIC, INC., ENOM, INC. and that Respondent is the current registrant of the names. eNom, Inc. (R39-LROR), ONLINENIC, INC., ENOM, INC. has verified that Respondent is bound by the eNom, Inc. (R39-LROR), ONLINENIC, INC., 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 June 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@citibusiness.org, postmaster@citiesmart.com, postmaster@citiesmart.net, postmaster@citilynks.net, postmaster@citishops.com, and postmaster@citishops.net. Also on June 12, 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 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citibusiness.org>, <citiesmart.com>, <citiesmart.net>, <citilynks.net>, <citishops.com>, and <citishops.net> domain names are confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citibusiness.org>, <citiesmart.com>, <citiesmart.net>, <citilynks.net>, <citishops.com>, and <citishops.net> domain names.
3. Respondent registered and used the <citibusiness.org>, <citiesmart.com>, <citiesmart.net>, <citilynks.net>, <citishops.com>, and <citishops.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., provides a broad range of financial services, including commercial banking, insurance, mortgages, bill payment, and brokerage and investment advisory services, to consumer and corporate customers worldwide. Complaint owns trademark registrations for the CITI and related marks with the United States Patent and Trademark Office (“USPTO”) and in approximately 200 other countries around the world:
CITI Reg. No. 1,181,467 issued Dec. 8, 1981 and
CITIBUSINESS Reg. No. 2,263,621 issued July 20, 1999.
Respondent, Steve Renner a/k/a Inter-Mark Corporation a/k/a Cash Cards International f/r/a CitiLynks.com, registered the <citiesmart.com> domain name on March 28, 2000; the <citiesmart.net> and <citishops.net> domain names on January 31, 2002; the <citilynks.net> domain name on February 11, 2003; the <citishops.com> domain name on August 25, 2003; and the <citibusiness.org> domain name on October 6, 2009. None of the disputed domains are being actively used to resolve to a website displaying content.
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 the instant proceeding, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The WHOIS information lists the registrants of the <citishops.net>, <citishops.com>, <citilynks.net>, <citiesmart.net>, and <citibusiness.org> domain names as “Steve Renner” and “Cash Cards International.” The WHOIS information for the <citiesmart.com> domain name lists the registrant as “Citilynks.com.” Complainant contends that “Steve Renner” is the same entity as “Citylynks.com” because the <citiesmart.com> domain name contains the same email address, steve@cashcards.net, listed for Steven Renner in four of the other domain names registered under Steven Renner’s name. In addition, Steven Renner is listed as the administrative, billing, and technical contacts for the <citiesmart.com> domain name, despite not being listed as the registrant. The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceeding.
Complaint owns trademark registrations for the CITI and related marks with the USPTO and in approximately 200 other countries around the world:
CITI Reg. No. 1,181,467 issued Dec. 8, 1981 and
CITIBUSINESS Reg. No. 2,263,621 issued July 20, 1999.
The Panel finds that Complainant’s evidence of its USPTO trademark registrations is sufficient to establish that Complainant has rights in the CITI mark for the purposes of Policy ¶ 4(a)(i). 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).”); see also American Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant alleges that Respondent’s the <citibusiness.org>, <citiesmart.com>,
<citiesmart.net>, <citilynks.net>, <citishops.com>,
and <citishops.net> domain names are confusingly similar to
Complainant’s CITI mark. Each of the
disputed domain names begins with Complainant’s CITI mark, followed by one or
more of the following additions:
“business,” “es,” “mart,” “lynks,” and “shops.” Each disputed domain name also includes the
generic top-level domain (“gTLD”) “.com,” “.net,” or “.org.” The Panel finds that neither adding letters,
such as “es,” nor generic terms, such as “business,” “mart,” “lynks,” or
“shops” creates a substantial enough change to Complainant’s CITI mark to
distinguish the disputed domain name. See
The Panel also finds that the gTLDs “.com.” “.net,” and
“.org” are irrelevant to the Policy ¶ 4(a)(i)
analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does not
affect the domain name for the purpose of determining whether it is identical
or confusingly similar); see also Nevada
State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum
Dec. 6, 2003) (“It has been established that the addition of a generic
top-level domain is irrelevant when considering whether a domain name is
identical or confusingly similar under the Policy.”).
Therefore, the Panel
finds Respondent’s <citibusiness.org>,
<citiesmart.com>, <citiesmart.net>, <citilynks.net>,
<citishops.com>, and <citishops.net> domain names are
confusingly similar to Complainant’s CITI mark pursuant to Policy ¶ 4(a)(i).
The Panel finds
Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the disputed domain names. Policy ¶ 4(a)(ii) first requires that Complainant establish a prima facie case against Respondent. In this instance, the Panel finds that Complainant has satisfied this obligation, thus passing the burden to Respondent to demonstrate its rights and legitimate interests. As the Respondent has failed to respond, however, Respondent has not met its burden. The Panel concludes that Respondent’s lack of response indicates a lack of rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel elects, however, to consider all the evidence in the record in light of the Policy ¶ 4(c) factors in order to determine whether Respondent possesses any rights and legitimate interests in the disputed domain names.
The WHOIS information lists the registrant of the <citishops.net>, <citishops.com>, <citilynks.net>, <citiesmart.net>, and <citibusiness.org> domain names as “Steve Renner” and/or “Cash Cards International.” The WHOIS information for the <citiesmart.com> domain name lists the registrant as “Citilynks.com.” The Panel finds that the lack of any connection between Respondent and the disputed domain names indicates that Respondent is not commonly known by the disputed domain names and consequently that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent’s <citibusiness.org>, <citiesmart.com>, <citiesmart.net>, <citilynks.net>, <citishops.com>, and <citishops.net> domain names are not in active use as each disputed domain name fails to resolve to a website displaying content. The Panel finds that Respondent’s failure to make active use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use in keeping with Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant asserts that Respondent is not making an active use of the <citibusiness.org>, <citiesmart.com>, <citiesmart.net>, <citilynks.net>, <citishops.com>, and <citishops.net> domain names. The Panel finds that Respondent’s failure to actively use the disputed domain names indicates bad faith registration and use pursuant to 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 Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds 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 <citibusiness.org>, <citiesmart.com>, <citiesmart.net>, <citilynks.net>, <citishops.com>, and <citishops.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 22, 2010
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