Citigroup Inc. v. PrivacyProtect.org a/k/a Domain Admin
Claim Number: FA1107001400922
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is PrivacyProtect.org a/k/a Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citcard.com>, registered with Power Brand Center Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2011; the National Arbitration Forum received payment on July 29, 2011.
On August 16, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <citcard.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 August 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@citcard.com. Also on August 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 September 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <citcard.com> domain name is confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citcard.com> domain name.
3. Respondent registered and used the <citcard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., is the owner of the CITI mark which is used in connection with financial services provided by Complainant such as real estate, consumer and commercial lending, and credit card services. Complainant has registered the CITI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,181,467 registered December 8, 1981). Additionally, Complainant has registered its mark with the federal trademark authority in Respondent’s jurisdiction, IP Australia (“IPA”) (Reg. No. 791,515 registered April 16, 1999).
Respondent, PrivacyProtect.org a/k/a Domain Admin, registered the disputed domain name on November 9, 2005. The <citcard.com> domain name resolves to a website which displays links to competing providers of credit card 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 contends that it has rights in its CITI mark. Previous panels have found in such cases as Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), that the registration of a mark with federal trademark authorities is sufficient to present a basis upon which the panel may find that Complainant has established rights in its mark. Complainant has offered to the Panel proof of registration through the USPTO of its CITI mark (Reg. No. 1,181,467 registered December 8, 1981). The Panel also has been given proof of Complainant’s registration of the CITI mark (Reg. No. 791,515 registered April 16, 1999) with IPA. Given that the Panel has evidence of registration of Complainant’s mark in its own jurisdiction and in Respondent’s jurisdiction, the Panel finds that Complainant has established rights in its CITI mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <citcard.com> domain name is confusingly similar to its CITI mark. Respondent made three changes to the CITI mark within the disputed domain name: the deletion of the letter “i” in the mark, the addition of the descriptive word “card,” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel, relying on past panels’ decisions, finds that the deletion of one letter of a mark in a domain name fails to distinguish the domain name from the mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark). Both Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005), and Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007), provide the Panel with evidence that the addition of a term which describes a complainant’s mark-related services is similarly insufficient to differentiate the disputed domain name. Lastly, the Panel finds that the addition of a gTLD, a required element of all domain names, is irrelevant in Policy ¶ 4(a)(i) determinations. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel finds that Respondent’s <citcard.com> domain name is confusingly similar to Complainant’s CITI mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Panels traditionally find that once a complainant makes a prima facie case in support of its claims, the burden then shifts to the respondent to prove the falsehood of these assertions. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“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 argues that Respondent lacks both rights and legitimate interests in the <citcard.com> domain name. The Panel finds that Complainant has established a prima facie case in support of this. Given that the burden has shifted to Respondent, the Panel must make inferences from the information available given Respondent’s failure to respond to the Complaint. 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. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will review the record under Policy ¶ 4(c) to determine if information exists suggesting that Respondent does possess rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent is not, and has never been, commonly known by the disputed domain name. Complainant argues that Respondent is not licensed to be using its CITI mark in any way and that there is no affiliation between Respondent and the CITI mark save for the registration of the allegedly infringing domain name. The WHOIS record for the <citcard.com> domain name lists “PrivacyProtect.org a/k/a Domain Admin” as the domain name registrant. The Panel, finding nothing to suggest that Respondent has connections to any derivation of the CITI mark or the <citcard.com> domain name, determines that Respondent is not commonly known by the disputed domain name 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 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).
Respondent’s <citcard.com> domain name resolves to a website which displays links to providers of credit card services similar to those which Complainant offers. Panels have found previously that the display of links to competing third-party websites is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. This can be seen in cases such as Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), and Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006). The Panel thus finds that Respondent’s use of the <citcard.com> domain name to display links to providers of services that compete with Complainant is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant contends that Respondent’s registration and use of the disputed domain name is disruptive to Complainant’s business in connection with its CITI mark. Panels find that the registration and use of a domain name which displays links to competing websites is disruptive of a complainant’s business. See 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)); 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)). Respondent, by registering and using a confusingly similar domain name, ensures that some Internet users are diverted to its own website and then use the links to reach Complainant’s competitors. Since some of these users will inevitably purchase services from the third-party websites instead of from Complainant’s website that they were initially trying to reach, the Panel finds that Respondent’s registration and use of the <citcard.com> domain name is disruptive and shows bad faith under Policy ¶ 4(b)(iii).
Complainant lastly argues that the registration and use of the <citcard.com> domain name by Respondent is a result of its potential to generate commercial gain. The confusingly similar domain name creates initial confusion in Internet users’ minds as to the sponsorship of the website by Complainant because the logical conclusion is that a domain name containing the majority of Complainant’s mark will be associated with Complainant and that mark. Here, the inclusion of “cit” in the disputed domain name suggests that the domain name is affiliated with Complainant’s CITI mark. On this presumption, many Internet users will enter the resolving website and be faced with links to competing providers of credit card services. Due to the similar content, Internet users’ confusion as to affiliation will increase, and they will likely purchase services from the competing websites based on the established goodwill of Complainant and the assumption that the websites are sponsored or associated with Complainant. The Panel infers that Respondent is compensated for the display of these links and the number of Internet users that are directed though the links. As such, the Panel finds that Respondent’s registration and use of the disputed domain name was done as a result of an attraction for commercial gain pursuant to 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 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).”).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <citcard.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 16, 2011
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