Citigroup Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1108001401110
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalcards.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2011; the National Arbitration Forum received payment on August 1, 2011.
After numerous requests, the Registrar, Power Brand Center Corp., has not confirmed to the National Arbitration Forum that the <universalcards.com> domain name is registered with Power Brand Center Corp. or that Respondent is the current registrant of the name. Power Brand Center Corp.’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On August 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@universalcards.com. Also on August 29, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 21, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <universalcards.com> domain name is confusingly similar to Complainant’s UNIVERSAL CARD mark.
2. Respondent does not have any rights or legitimate interests in the <universalcards.com> domain name.
3. Respondent registered and used the <universalcards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., is a financial services company that provides credit cards and related financial services. Complainant alleges common law rights in the UNIVERSAL CARD mark by virtue of using the mark in international and interstate commerce in connection with its credit card and financial services.
Respondent, PrivacyProtect.org / Domain Admin, registered the <universalcards.com> domain name on April 18, 2001. The disputed domain name resolves to a website offering competing credit card services of Complainant’s principal competitors.
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 does not claim to have a trademark registration for its UNIVERSAL CARD mark. However, a trademark registration is not necessary for the UDRP in instances where a complainant can demonstrate rights in a mark through continuous use and the acquisition of secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant asserts that it has common law rights in the UNIVERSAL CARD mark because it has continuously used the mark since at least 1998 in connection with its credit card and related financial services. Complainant also owns the <universalcard.com> domain name, which corresponds to the UNIVERSAL CARD mark. Complainant argues that it has owned this domain name since1997 and has used the associated website to offer its UNIVERSAL CARD services to the public. Complainant contends that it has used the UNIVERSAL CARD mark in both interstate and international commerce. Complainant has provided evidence that in conjunction with its licensee AT&T, it began using the UNIVERSAL CARD mark in 1998 with the introduction of its online customer interface and has thousands of users that result in revenues of many millions of dollars. See Complainant’s Exhibit E. Complainant argues that it has customer relationships with approximately three million cardholders and that its website at the <universalcard.com> domain name receives approximately 660,000 unique login visitors per month. Complainant alleges that it has expended significant effort and resources in marketing and promoting the UNIVERSAL CARD mark and provides evidence of some of these marketing efforts in its Exhibit F, including numerous mailings, letters, and envelopes bearing the UNIVERSAL CARD mark and pictures of the credit card displaying the mark. Based on this evidence of widespread use and high levels of publicity, the Panel determines that Complainant has proven common law rights in the UNIVERSAL CARD by establishing that the mark is associated with Complainant and has secondary meaning under Policy ¶ 4(a)(i), dating back to 1997. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).
Complainant argues that Respondent’s <universalcards.com> domain name is confusingly similar to Complainant’s UNIVERSAL CARD mark because the disputed domain name merely omits the spaces between the terms, adds the letter “s” to the end of Complainant’s mark, and attaches the generic top-level domain (“gTLD”) “.com.” In Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006), and T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007), the panels found that the addition of the letter “s” to a mark in a disputed domain name was not sufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). Omitting spaces and attaching gTLDs also does not affect the confusingly similar analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). As a result, the Panel determines that Respondent’s <universalcards.com> domain name is confusingly similar to Complainant’s UNIVERSAL CARD mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has proven Policy ¶ 4(a)(i).
Complainant has presented a prima facie case against Respondent in these proceedings, thus satisfying its burden under Policy ¶ 4(a)(ii) and transferring the obligation to prove rights and legitimate interests in the disputed domain name to Respondent. Respondent has failed to respond or prove any rights or legitimate interests because it has neither contested Complainant’s allegations nor provided any contrasting evidence supporting its position. Without the benefit of a Response from Respondent, the Panel is allowed to conclude that Complainant’s allegations may be taken as true and that Respondent does not possess rights and legitimate interests in the disputed domain name. See America Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel elects to continue the analysis under Policy ¶ 4(c), however.
Complainant denies that it has ever given Respondent any license, permission, or authorization to use the UNIVERSAL CARD mark. Complainant asserts that Respondent has never been commonly known by the disputed domain name and has never used any trademark similar to Complainant’s mark. The WHOIS information for the <universalcards.com> domain name does not reflect any connection between Respondent and the disputed domain name. Accordingly, the Panel holds that Respondent lacks rights and legitimate interests in the <universalcards.com> domain name according to Policy ¶ 4(c)(ii). See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006); Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003).
By posting a variety of pay-per-click links on the resolving website, many of which advertise competing card and financial services providers, Complainant asserts that Respondent uses the <universalcards.com> domain name merely to misdirect Complainant’s intending customers to competing and other unrelated websites. As this takes unfair advantage of Complainant’s mark and acquired goodwill, the Panel concludes that it does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant argues that because the <universalcards.com> domain name differs from its UNIVERSAL CARD mark only in very minor ways, the registration of such a domain name is intended to target Complainant’s customers. Complainant asserts that this behavior is typosquatting, which further demonstrates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). The Panel agrees. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds Complainant has proven Policy ¶ 4(a)(ii).
A screen shot of the resolving website provided by Complainant shows that the website displays a variety of links, such “Capital One Credit Card,” “Apply for Credit Cards,” and “10 Best Credit Cards.” As Complainant provides credit card services under the UNIVERSAL CARD mark, the Panel finds that advertising the card services of other card companies at the disputed domain name disrupts Complainant’s business by suggesting alternative options to Internet users who were initially seeking information solely on Complainant. The Panel concludes that this effort to foster competition with Complainant and divert consumers demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also American Airlines, Inc. v. Texas 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 contends that given the considerable use and widespread fame of the UNIVERSAL CARD mark, the presence of the mark in Respondent’s <universalcards.com> domain name is likely to attract consumers seeking Complainant. The mark’s inclusion in the disputed domain name and the references to credit card services on the resolving website are likely to create confusion among Internet users as to whether Respondent’s website is affiliated with Complainant in some way. Complainant alleges that the links advertised on the disputed domain name are pay-per-click links and that Respondent generates revenue by referring visitors to the third-party websites advertised in the links. The Panel finds that Respondent’s efforts to attract, mislead, and profit from Complainant’s consumers by misappropriating Complainant’s mark indicates bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel has previously concluded that Respondent’s registration of the <universalcards.com> domain name constitutes typosquatting. In Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panels determined that typosquatting shows bad faith under Policy ¶ 4(a)(iii) as it is a way of capitalizing on the profit potential of another’s mark by registering a variation containing a typographical error. The Panel agrees with these decisions and finds that Respondent’s typosquatting indicates bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has proven Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universalcards.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 27, 2011
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