Citigroup Inc. v. Callum Macgregor
Claim Number: FA1103001381321
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady, Jr. of Greenberg Traurig, LLP, Illinois, USA. Respondent is Callum Macgregor (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citifinancialcareers.com>, <nationalciytbank.com>, and <citident.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com.
The undersigned certifies that he or 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 March 30, 2011; the National Arbitration Forum received payment on March 31, 2011.
On April 1, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <citifinancialcareers.com>, <nationalciytbank.com>, and <citident.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com 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 April 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@citifinancialcareers.com, postmaster@nationalciytbank.com, and postmaster@citident.com. Also on April 6, 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 29, 2011, 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 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:
1. Respondent’s <citifinancialcareers.com>, <nationalciytbank.com>, and <citident.com> domain names are confusingly similar to Complainant’s CITIBANK mark.
2. Respondent does not have any rights or legitimate interests in the <citifinancialcareers.com>, <nationalciytbank.com>, and <citident.com> domain names.
3. Respondent registered and used the <citifinancialcareers.com>, <nationalciytbank.com>, and <citident.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., is a company that provides a broad range of financial services to consumers and corporate customers worldwide, including traditional commercial banking services, checking and saving accounts, loans, credit and debit cards, insurance, mortgages, bill payment services, brokerage services and investment advisory services. Complainant owns multiple trademarks for the CITIBANK and related marks with the United Kingdom Intellectual Property Office (“UKIPO”) and the European Union Office for Harmonization in the Internal Market (“OHIM”):
UKIPO
CITIBANK Reg. No. 1,283.067 issued March 10, 1989;
CITI Reg. No. 2,496,512 issued December 26, 2008; and
OHIM
CITIFINANCIAL Reg. No. 002223014 issued September 27, 2002.
Respondent, Callum Macgregor, registered the <citident.com> domain name on December 3, 2005, the <nationalciytbank.com> domain name on December 21, 2007 and the <cityfinancialcareers.com> domain name on May 30, 2009. The disputed domain names all resolve to pay-per-click websites advertising various links, including many which compete with Complainant.
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 multiple trademarks for the CITIBANK and related marks with the UKIPO and the European Union OHIM:
UKIPO
CITIBANK Reg. No. 1,283.067 issued March 10, 1989;
CITI Reg. No. 2,496,512 issued December 26, 2008; and
OHIM
CITIFINANCIAL Reg. No. 002223014 issued September 27, 2002.
The Panel finds that evidence of trademark registration with a trademark authority, such as the UKIPO, is sufficient to prove Complainant’s rights in the CITIBANK mark for the purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names, and the evidence put forth by Complainant to support this assertion establishes a prima facie case against Respondent required by Policy ¶ 4(a)(ii). Respondent now bears the burden of proving the existence of its rights and legitimate interests, but its failure to respond allows the Panel to conclude that Respondent has not met this burden and lacks rights and legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). In order to make a full determination of Respondent’s rights and legitimate interests, however, the Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors.
Complainant asserts that Respondent has never used any trademark or service mark similar to the disputed domain names by which it may have come to be known. Complainant also alleges that Respondent has not been granted any license, permission or authorization to use Complainant’s CITIBANK mark in the disputed domain name. As the WHOIS information indicates that the registrant of these disputed domain names is “Callum Macgregor,” which appears to have no relationship to the disputed domain names, the Panel concludes that Respondent is not commonly known by the disputed domain names and consequently lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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 disputed domain names all resolve to websites featuring pay-per-click links to third-party websites, many of which offer services or products in competition with Complainant. The Panel finds that Respondent’s use of the disputed domain names in connection with a pay-per-click directory does not constitute a bona fide offering of good or services or a legitimate noncommercial or fair use required by Policy ¶¶ 4(c)(i) or 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that they operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent has shown a pattern of bad faith registration and use in registering three disputed domain names appropriating Complainant’s mark The Panel finds that a single instance of registering multiple infringing domain names is sufficient to prove bad faith registration and use according to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Complainant asserts that Respondent’s disputed domain names resolve to a directory website advertising links to other third-party websites, many of which offers financial services in competition with Complainant. Respondent’s maintenance of this website disrupts Complainant’s business as Internet users seeking Complainant may be diverted to Respondent’s directory website and subsequently arrive at a competitor’s site. The Panel finds Respondent’s disruption of Complainant’s business by providing links to competitors supports a finding of bad faith registration and use pursuant 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent includes variations of Complainant’s mark in the disputed domain names in order to attract Complainant’s customers to Respondent’s website. Complainant alleges that Respondent profits from this attraction because the links on the site, presumed to be pay-per-click links, result in financial benefit to Respondent each time they are clicked. The Panel finds that Respondent’s attempt to attract Complainant’s customers for Respondent’s own commercial gain is in violation of Policy ¶ 4(b)(iv) and shows bad faith registration and use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably benefitted by receiving click-through fees for diverting Internet users to unrelated third-party websites).
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 <citifinancialcareers.com>, <nationalciytbank.com>, and <citident.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 2, 2011
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