Citigroup Inc. v. Taranga Services Pty Ltd / Domain Admin
Claim Number: FA1103001377829
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, Illinois, USA. Respondent is Taranga Services Pty Ltd / Domain Admin (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <clicktopayciticards.com> and <wwwcitibankcards.com>, registered with MONIKER ONLINE SERVICES, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2011; the National Arbitration Forum received payment on March 15, 2011.
On March 15, 2011, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <clicktopayciticards.com> and <wwwcitibankcards.com> domain names are registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the names. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, 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 March 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 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@clicktopayciticards.com, postmaster@wwwcitibankcards.com. Also on March 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 April 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a world-wide financial resources company.
Complainant owns the CITI and CITIBANK service marks, and uses those marks to promote its credit card, banking and other financial services businesses.
Complainant holds service mark registrations for its CITI mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,181,467, issued December 8, 1981).
Complainant also holds service mark registrations for its CITIBANK mark with the USPTO (including Reg. No. 691,815, issued January 19, 1960).
Respondent registered the <clicktopayciticards.com> domain name on April 5, 2003 and the <wwwcitibankcard.com> domain name on August 31, 2005.
The disputed domain names resolve to directory websites which display links to third-party sites in competition with Complainant’s financial and banking services.
Respondent has been a respondent in at least two prior UDRP cases both of which resulted in the transfer of disputed domain names in those cases to complainants.
Respondent’s <clicktopayciticards.com> domain name is confusingly similar to Complainant’s CITI mark.
Respondent’s <wwwcitibankcards.com> domain name is confusingly similar to Complainant’s CITIBANK mark.
Respondent does not have any rights to or legitimate interests in either of the domain names <clicktopayciticards.com> and <wwwcitibankcards.com>.
Respondent registered and uses the domain names <clicktopayciticards.com> and <wwwcitibankcards.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to service marks in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Pursuant to Policy ¶ 4(a)(i), Complainant has demonstrated its rights in the CITI and CITIBANK marks by virtue of its registrations of the marks with a national trademark authority, the USPTO. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (complainants had established rights in marks where the marks were registered with a trademark authority). See also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <clicktopayciticards.com> domain name is confusingly similar to Complainant’s CITI mark. The domain name incorporates the mark in its entirety and differs only by adding the descriptive phrase “click to pay” and the descriptive word “cards,” as well as the generic top-level domain (“gTLD”) “.com.” These differences are inadequate to distinguish the domain name from the mark, in particular because the added descriptive terms relate to Complainant’s business. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to a complainant’s MILLER mark, because:
[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).
Similarly, the affixation of a gTLD to Complainant’s mark in forming the disputed domain name does not adequately differentiate the domain from Complainant’s mark. See 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 concludes that Respondent’s <clicktopayciticards.com> is confusingly similar to Complainant’s CITI mark under Policy ¶ 4(a)(i).
For similar reasons, we also conclude that Respondent’s domain name <wwwcitibankcards.com> is confusingly similar to Complainant’s CITIBANK mark. The domain name uses the entire CITIBANK mark and adds the “www” prefix, the descriptive word “cards,” and the gTLD “.com.” The prefix “www” does nothing to distinguish the disputed domain name from Complainant’s mark. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by a complainant’s trademark with no period separating them did not distinguish the mark from the resulting domain name).
Likewise, the added descriptive words, which again relate to Complainant’s business, do not differentiate the disputed domain name from Complainant’s CITIBANK mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, a disputed domain name, contained a complainant’s mark in its entirety, merely adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
Finally, the addition of a gTLD to Complainant’s CITIBANK mark in forming the contested domain name does not remove the domain from the realm of confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), supra.
The Panel therefore concludes that Respondent’s <wwwcitibankcards.com> domain name is confusingly similar to Complainant’s CITIBANK mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks both rights to and legitimate interests in the disputed domain names. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), a panel found that:
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has made out a prima facie showing in support of its allegations against Respondent under this head of the Complaint. Therefore, and owing to Respondent’s failure to respond to the allegations of the Complaint, we may presume that Respondent has no rights to or legitimate interests in the contested domain name sufficient to satisfy the requirements of Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by either of the disputed domain names, and that Complainant has not granted to Respondent any license, permission or authorization to use its CITI or CITIBANK marks within the disputed domain names. Moreover, the pertinent WHOIS information identifies the registrants of the disputed domains only as “Domain Admin/Taranga Services Pty Ltd,” which is not similar to either of the disputed domain names. On this record, we must conclude that Respondent is not commonly known by either of the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in either of them under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by that domain name, and where a complainant asserted that it had not authorized or licensed that respondent’s use of its mark in a domain name).
We next consider that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain names to operate directory websites which feature links to the websites of enterprises in competition with the business of Complainant. In the circumstances here presented, we may comfortably presume that Respondent receives click-through fees from the visits of Internet users to these links. Respondent’s use of the contested domain names in this manner is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not 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), where a respondent presumably received “click-through” fees for each consumer it redirected to other websites); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a 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 websites of a complainant’s competitors in the financial services industry).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Given its prior UDRP proceedings that resulted in findings of bad faith registration and use of domain names, and the transfer of the disputed domain names to complainants in those cases, Respondent has demonstrated a pattern of bad faith registration and use of domains. Under Policy ¶ 4(b)(ii), we are permitted to and do conclude that it has therefore similarly registered and uses in bad faith the domains at issue in this proceeding. See WILLIAMS-SONOMA, INC v. Taranga Services Pty Ltd c/o Domain Admin, FA 1351752 (Nat. Arb. Forum Nov. 16, 2010); see also Cricket Communications, Inc. v. Domain Admin / Taranga Services Pty Ltd, FA 1336335 (Nat. Arb. Forum July 27, 2010).
In addition, we are persuaded that Respondent’s use of the disputed domain names as alleged in the Complaint disrupts Complainant business. Internet users intending to purchase or investigate Complainant’s financial and banking services may instead find Respondent’s website and its sponsored links as a result of Respondent’s use of domain names confusingly similar to Complainant’s CITI and CITIBANK marks. The registration and use of the domains for this purpose is evidence of their bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a search engine with links to the websites of a complainant’s commercial competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain to advertise goods and services of a complainant’s competitors, disrupting that complainant’s business).
For these reasons, the Panel finds that the proof requirements of Policy ¶ 4(a)(iii) have been met.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the domain names <clicktopayciticards.com>, <wwwcitibankcards.com> be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 22, 2011
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