Citigroup Inc. v. Whois Privacy Service
Claim Number: FA1103001377993
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Whois Privacy Service (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ciitcards.com> (“Disputed Domain Name”), registered with FABULOUS.COM PTY LTD.
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.
Michael A. Albert 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, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <ciitcards.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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@ciitcards.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.
A timely Response was received and determined to be complete on April 5, 2011.
On April 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is a financial services company with trademark registrations in about 200 countries throughout the world, including registrations to the CITI Marks in the United States and in China. Because of Complainant’s extensive use of its marks in the United States, China and around the world, the CITI Marks have obtained the status of notorious marks.
Complainant further contends that the Disputed Domain Name, <ciitcards.com>, is confusingly similar to the CITI Marks as it consists of a misspelling of the CITI Marks.
Complainant further contends that Respondent lacks rights or legitimate interest in the Disputed Domain Name. Respondent has never been commonly known as <ciitcards.com> and has never used any trademark or service mark similar to the Disputed Domain Name by which it may have come to be known. Respondent has never operated any bona fide or legitimate business under the Disputed Domain Name and is not making a protected non-commercial or fair use of the Disputed Domain Name. Respondent was undoubtedly aware of Complainant’s marks prior to the registration of the Disputed Domain Name, given their considerable registration and use. Complainant has not granted Respondent any license, permission, or authorization by which he could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks.
Complainant further contends that Respondent registered and has used the Disputed Domain Name in bad faith. Given the considerable registration and use of the CITI Marks, Respondent knew or should have known of such marks at all relevant times. Accordingly, Respondent had actual or constructive knowledge that the Disputed Domain Name, which mimics and/or incorporates Complainant’s registered marks, is confusingly similar to Complainant’s marks. Given the considerable registration and/or use of the CITI Marks, Internet users are likely to be induced to believe that the Disputed Domain Name connects to websites associated with or sponsored by Complainant.
B. Respondent
Respondent contends that Complainant’s Marks are different from the Disputed Domain Name.
Respondent further contends that it is making a bona fide offering of goods or services through the use of a parking page by giving visitors to the domain the opportunity to click on advertisements.
Respondent further contends that an Internet user viewing the parked website could not be in any doubt that the Disputed Domain Name is an unofficial website. Therefore, it cannot be inferred that Respondent set out to mislead Internet users.
For the reasons set forth below, the Panel finds Complainant has proven that the domain name should be transferred.
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."
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 has provided sufficient evidence to establish that it is the owner of the CITI Marks.
Because Complainant does not have a trademark registration for the phrase <ciitcards.com>, the issue is not whether the Disputed Domain Name and Complainant’s CITI Marks are identical, but whether they are confusingly similar.
The Disputed Domain Name combines three elements: (1) the term “ciit”; (2) the suffix “cards”; and (3) the generic top-level domain “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “ciitcards”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, D2006-0561 (WIPO July 19, 2006).
The Disputed Domain Name features a common and predictable misspelling of the CITI Marks by changing CITI to “ciit”. The practice of “typosquatting” has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark. Edmunds.com, Inc. v. Digi Real Estate Foundation, D2006-1043 (WIPO Oct. 6, 2006) (finding <edmundss.com> confusingly similar to EDMUND’S mark because of easily made typing errors); Sharman License Holdings, Limited v. IcedIt.com, D2004-0713 (WIPO Dec. 17, 2004) (finding circumstances of “typosquatting” constitute confusing similarity). Thus, transposing two letters in Complainant’s CITI Marks does not serve to remove the Disputed Domain Name from the realm of confusing similarity. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).
Moreover, the addition of the term “cards,” which is descriptive of Complainant’s provision of credit and debit card services, does not adequately distinguish the Disputed Domain Name from Complainant’s Marks. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that addition of generic term “finance,” which described complainant’s financial services business, did not sufficiently distinguish respondent’s disputed domain name from complainant’s mark).
For the foregoing reasons, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s CITI Marks, in which Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy.
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant alleges, and Respondent does not dispute, that: (1) Respondent has never been commonly known as “ciitcards.com”; (2) Respondent has never used any trademark or service mark similar to the Disputed Domain Name by which it may have come to be known; (3) Respondent is not making a protected non-commercial or fair use of the Disputed Domain Name; (4) Respondent was undoubtedly aware of Complainant’s marks prior to the registration of the Disputed Domain Name, given their considerable registration and use; and (5) Complainant has not granted Respondent any license, permission, or authorization by which he could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks.
The parties dispute whether Respondent is making a bona fide offering of goods or services through his hosting of a parking page with advertisements. However, Respondent concedes that “some of the adverts show products or services related to those of Citibank.” Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that respondent was not using <tesco-finance.com> domain name in connection with a bona fide offering of goods or services by maintaining web page with misleading links to complainant’s competitors in financial services industry); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding use of disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services). Indeed, “it is well-established that operating a link farm parking page using a service mark in a domain name, and providing connection to services competitive with the service mark owner, does not establish rights or legitimate interests.” Get Away Today.Com Inc. v. Warren Gilbert, DCO2010-0021 (WIPO Nov. 12, 2010) (collecting cases).
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy Paragraph 4(b)(iv), occurs when the Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on the Respondent’s web site.
Registered In Bad Faith
The Panel finds that Respondent likely knew of Complainant’s Marks when he registered the Disputed Domain Name given Complainant’s widespread use of the CITI Marks in connection with financial services. See Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415 (WIPO Dec. 10, 2007) (“It defies common sense to believe that Respondent coincidentally selected these precise domain names [<proforcekarate.com> and <proforcemartialarts.com>] without any knowledge of Complainant and its PROFORCE Trademarks.”); Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (“[S]ince Complainant's trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant's trademark rights.”). Moreover, it is unlikely that the transposing of “i” and “t” was simply a coincidental misspelling of the CITI Marks; instead, it provides circumstantial evidence that Respondent had actual knowledge of the CITI Marks prior to registration.
Based upon the foregoing circumstantial evidence, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.
Used In Bad Faith
The Panel also finds that Respondent used the Disputed Domain Name in bad faith. It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding bad faith registration and use where disputed domain name was confusingly similar to complainant’s mark and contained links to third-party websites offering similar services similar to complainant’s); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where respondent’s use of disputed domain name to advertise competing car dealerships would likely lead to confusion among Internet users as to sponsorship or affiliation of those competing dealerships).
Here, Respondent appears to have intended to use the Disputed Domain Name to promote competing services based upon the confusing similarity between Complainant’s CITI Marks and Respondent’s <ciitcards.com> website. Though Respondent contends it does not control the content of the parked website, previous panels have determined that a respondent is ultimately responsible for the website’s content. See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008) (“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ciitcards.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: May 5, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page