Citizens Financial Group, Inc. v. Kai McNess
Claim Number: FA1101001367606
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA. Respondent is Kai McNess (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citizensautofinance.net>, registered with GoDaddy.com, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2011; the National Arbitration Forum received payment on January 14, 2011.
On January 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <citizensautofinance.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 January 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2011 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@citizensautofinance.net. Also on January 17, 2011, 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 February 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citizensautofinance.net> domain name is confusingly similar to Complainant’s CITIZENS AUTOMOBILE FINANCE mark.
2. Respondent does not have any rights or legitimate interests in the <citizensautofinance.net> domain name.
3. Respondent registered and used the <citizensautofinance.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citizens Financial Group, Inc., provides financial services in the United States, including retail and commercial banking services. Complainant owns a trademark registration for the CITIZENS AUTOMOBILE FINANCE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,349,668 issued December 4, 2007).
Respondent, Kai McNess, registered the <citizensautofinance.net> domain name on February 12, 2009. The disputed domain name resolves to a directory webpage featuring various commercial links, including links to third-party providers of competing services.
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 owns a trademark registration for the CITIZENS AUTOMOBILE FINANCE mark with the USPTO (Reg. No. 3,349,668 issued December 4, 2007). The Panel finds that a USPTO trademark registration sufficiently proves Complainant’s rights in the CITIZENS AUTOMOBILE FINANCE mark for the purposes of Policy ¶ 4(a)(i), even though Respondent lives or operates in a country outside the United States. 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 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).
Complainant alleges that Respondent’s <citizensautofinance.net> domain name is confusingly similar to Complainant’s CITIZENS AUTOMOBILE FINANCE mark because the only differences are the abbreviation of the term “automobile” to “auto,” the deletion of the spaces between terms, and the addition of the generic top-level domain (“gTLD”) “.net.” The Panel finds that abbreviating a term in Complainant’s mark has no effect on preventing a finding of confusing similarity. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ connotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)). The Panel also finds that neither the deletion of the spaces nor the addition of the gTLD distinguishes the disputed domain name. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, the Panel finds that Respondent’s <citizensautofinance.net> domain name is confusingly similar to Complainant’s CITIZENS AUTOMOBILE FINANCE mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires that Complainant put forth a prima facie case alleging Respondent’s lack of rights and legitimate interests before Complainant can shift the burden of proof to Respondent. As Complainant has satisfied this obligation in the instant proceedings, Respondent now bears the burden of proving its rights and legitimate interests in the disputed domain name. Respondent has defaulted, however, which the Panel finds indicates a complete lack of rights and legitimate interests. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel will nevertheless consider the full evidentiary record according to the Policy ¶ 4(c) factors, however, to make a complete determination on Respondent’s rights and legitimate interests.
Complainant asserts that Respondent is not commonly known by the <citizensautofinance.com> domain name. The WHOIS information for the disputed domain name identifies the registrant as “Kai McNess,” a name which has no facial association with the disputed domain name. The Panel accordingly finds that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s <citizensautofinance.net> domain name resolves to a generic website full of pay-per-click links to various third-parties, including some that compete with Complainant. These links include “Auto Financing & Loans,” “Refinancing Auto Loan?,” and “Pay Car Loan Online.” The Panel finds that the use of the disputed domain name to host such competitive pay-per-click links is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that the presence of competing pay-per-click links on the website resolving from Respondent’s <citizensautofinance.net> domain name disrupts Complainant’s business because these links facilitate the redirection of Complainant’s customers to other businesses. The Panel finds that Respondent’s use and misappropriation of Complainant’s mark for this purpose demonstrates bad faith registration and use according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent uses such a similar variation of Complainant’s mark in the <citizensautofinance.net> domain name in order to attract Internet users familiar with Complainant and seeking Complainant’s products and services. Complainant argues that the competing pay-per-click links that relate to Complainant’s business on the resolving website may confuse Internet users and lead them to believe there is an association or affiliation between Complainant and Respondent. Complainant asserts that Respondent profits from this scheme by way of the pay-per-click fees generated when Internet users click on any of the links. The Panel finds that these activities are therefore evidence of Respondent’s bad faith registration and use of the <citizensautofinance.net> domain name for the purposes of 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 AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
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 <citizensautofinance.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 10, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page