Citigroup Inc. v. paulo central a/k/a paulo kann a/k/a Pending Renewal or Deletion
Claim Number: FA1356020
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is paulo central a/k/a paulo kann a/k/a Pending Renewal or Deletion (“Respondent”), Unknown.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <citibankc.com>, registered with Go Montenegro Domains, Inc.
The domain names at issue are <ciitibankonline.com>, <citiankonline.com>, <citifinanceauto.com>, <citifinanialauto.com>, <credcardciti.com>, and <ctitibank.com>, registered with Dynadot, LLC.
The domain name at issue is <citibanlonline.com>, registered with Go Canada Domains, Inc.
The domain name at issue is <citibanlk.com>, registered with Go China Domains, Inc.
The domain name at issue is <citibankonilne.com>, registered with WILD WEST DOMAINS, INC.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2010; the National Arbitration Forum received payment on November 2, 2010.
On November 4, 2010, Go Montenegro Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <citibankc.com> domain name is registered with Go Montenegro Domains, Inc. and that Respondent is the current registrant of the name. Go Montenegro Domains, Inc. has verified that Respondent is bound by the Go Montenegro Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2010, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <ciitibankonline.com>, <citiankonline.com>, <citifinanceauto.com>, <citifinanialauto.com>, <credcardciti.com>, and <ctitibank.com> domain names are registered with DYNADOT, LLC and that Respondent is the current registrant of the names. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Policy (the “Policy”).
On November 2, 2010, Go Canada Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <citibanlonline.com> domain name is registered with Go Canada Domains, Inc. and that Respondent is the current registrant of the name. Go Canada Domains, Inc. has verified that Respondent is bound by the Go Canada Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’S Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 2, 2010, Go China Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <citibanlk.com> domain name is registered with Go China Domains, Inc. and that Respondent is the current registrant of the name. Go China Domains, Inc. has verified that Respondent is bound by the Go China Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 2, 2010, WILD WEST DOMAINS, INC. confirmed by e-mail to the National Arbitration Forum that the <citibankonilne.com> domain name is registered with WILD WEST DOMAINS, INC. and that Respondent is the current registrant of the name. WILD WEST DOMAINS, INC. has verified that Respondent is bound by the WILD WEST DOMAINS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@ciitibankonline.com, postmaster@citiankonline.com, postmaster@citibankc.com, postmaster@citibankonilne.com, postmaster@citibanlk.com, postmaster@citibanlonline.com, postmaster@citifinanceauto.com, postmaster@citifinanialauto.com, postmaster@credcardciti.com, and postmaster@ctitibank.com. Also on November 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 December 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 the Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ciitibankonline.com>, <citiankonline.com>, <citibankc.com>, <citibankonilne.com>, <citibanlk.com>, <citibanlonline.com>, and <ctitibank.com> domain names are confusingly similar to Complainant’s CITIBANK mark.
Respondent’s <citifinanceauto.com>, <citifinanialauto.com>, and <credcardciti.com> domain names are confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <ciitibankonline.com>, <citiankonline.com>, <citibankc.com>, <citibankonilne.com>, <citibanlk.com>, <citibanlonline.com>, <citifinanceauto.com>, <citifinanialauto.com>, <credcardciti.com>, <ctitibank.com> domain names.
3. Respondent registered and used the <ciitibankonline.com>, <citiankonline.com>, <citibankc.com>, <citibankonilne.com>, <citibanlk.com>, <citibanlonline.com>, <citifinanceauto.com>, <citifinanialauto.com>, <credcardciti.com>, <ctitibank.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., is a financial services company that owns an extensive family of trademarks with the United States Patent and Trademark Office (“USPTO”) including for the CITI mark (e.g., Reg. No. 1,181,467 issued December 8, 1981) and the CITIBANK mark (e.g., Reg. No. 691,815 issued January 19, 1960).
Respondent registered the disputed domain names not earlier than May 30, 2009. The disputed domain names resolve to websites displaying links to Complainant’s competitors in the banking industry.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, 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.” Complainant has submitted sufficient evidence to satisfy the Panel that the disputed domain names are controlled by the same person and/or entity. The Panel thus elects to proceed with an analysis of the allegations as to all of the disputed domain names.
Complainant claims rights in its CITI (e.g., Reg. No. 1,181,467 issued December 8, 1981) and CITIBANK (e.g., Reg. No. 691,815 issued January 19, 1960) marks based on its multiple registrations of the marks with the USPTO. The Panel finds that Complainant’s registration of the marks with a governmental trademark authority is conclusive evidence of Complainant’s rights in the marks. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Am. 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’)”). Additionally, the Panel finds that a trademark registration in any jurisdiction adequately establishes Complainant’s rights in the marks, even if Respondent does not operate or reside in that jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel concludes that Complainant has rights in both its CITI and CITIBANK marks for the purposes of Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <ciitibankonline.com>, <citiankonline.com>, <citibankc.com>, <citibankonilne.com>, <citibanlk.com>, <citibanlonline.com>, and <ctitibank.com> domain names are confusingly similar to Complainant’s CITIBANK mark. Respondent’s disputed domain names include one or more of the following modifications to the CITIBANK mark: (1) the addition of a letter (“i,” “c,” “l,” or “t”); (2) the deletion of a letter (“b”); (3) the substitution of a single letter (replacing a “k” with an “l”); or (4) the addition of a generic term (“online”) or a misspelled version thereof. The Panel finds that none of these modifications either alone, or in combination, are not sufficient to distinguish the disputed domain names from Complainant’s CITIBANK 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 Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). Additionally, Respondent’s <ciitibankonline.com>, <citiankonline.com>, <citibankc.com>, <citibankonilne.com>, <citibanlk.com>, <citibanlonline.com>, and <ctitibank.com> domain names all contain the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that Respondent’s <ciitibankonline.com>, <citiankonline.com>, <citibankc.com>, <citibankonilne.com>, <citibanlk.com>, <citibanlonline.com>, and <ctitibank.com> domain names are confusingly similar to Complainant’s CITIBANK mark.
Complainant also asserts that Respondent’s <citifinanceauto.com>, <citifinanialauto.com>, and <credcardciti.com> domain names are confusingly similar to Complainant’s CITI mark. Respondent’s disputed domain names merely add one or more of the following generic or descriptive terms (some of which are misspelled or abbreviated versions), “finance,” “finanial,” “auto,” “cred,” or “card” as well as the gTLD “.com.” The Panel finds that the addition of generic or descriptive terms along with a gTLD is not sufficient to distinguish the disputed domain names from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity 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, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <citifinanceauto.com>, <citifinanialauto.com>, and <credcardciti.com> domain names are confusingly similar to Complainant’s CITI mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain names. Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its assertions before the burden of proof shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Respondent has established a prima facie case and Respondent has failed to submit a Response to these proceedings. Respondent’s lack of a response may permit the Panel to infer that Respondent lacks rights and legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Nevertheless, the Panel elects to consider the evidence on record in light of the factors contained in Policy ¶ 4(c) to determine whether Respondent has rights or legitimate interests in the disputed domain names.
Complainant asserts that it has not granted Respondent any license, permission, or authorization by which Respondent could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks. Additionally, Complainant alleges that the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. The Panel finds that based on the evidence in the record and Complainant’s arguments, Respondent is not commonly known by the disputed domain names and consequently lacks rights and legitimate interests in the disputed domain names pursuant to 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges, and provides evidence in the form of screenshots of the resolving websites for each of the disputed domain names, that all of Respondent’s disputed domain names resolve to websites featuring links related to banking and finance in competition with the services offered by Complainant. The Panel presumes that Respondent profits in some way from the displayed links. Therefore, the Panel finds that Respondent’s use of the disputed domain names is not 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent operates as a competitor of Complainant by displaying pay-per-click links to third-parties offering services that directly compete with Complainant’s banking and financial services. The Panel agrees with Complainant as to the competitive nature of Respondent’s disputed domain names and finds that Respondent’s registration and use of the disputed domain names was done in bad faith under Policy ¶ 4(b)(iii) and constitutes a disruption of Complainant’s business. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
Although Complainant does not argue it, the Panel finds that Respondent’s registration and use of the confusingly similar disputed domain names is bad faith under Policy ¶ 4(b)(iv). As established previously, Respondent’s disputed domain names are all confusingly similar to Complainant’s CITI and CITIBANK marks. The Panel also finds that Respondent presumably receives some form of commercial gain from the resolving websites and the displayed links. Therefore, the Panel concludes that Respondent registered, and is using, the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its disputed domain names by creating a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, Respondent’s disputed domain names. 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 T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <ciitibankonline.com>, <citiankonline.com>, <citibankc.com>, <citibankonilne.com>, <citibanlk.com>, <citibanlonline.com>, <citifinanceauto.com>, <citifinanialauto.com>, <credcardciti.com>, and <ctitibank.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 13, 2010
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