Citigroup Inc. v. SEA Servicios Especializados de Asistencia, SA CV
Claim Number: FA1303001488378
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is SEA Servicios Especializados de Asistencia, SA CV (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citibeyond.com>, registered with Domain.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2013; the National Arbitration Forum received payment on March 4, 2013.
On March 4, 2013, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <citibeyond.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2013 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@citibeyond.com. Also on March 5, 2013, 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 April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
1. Citigroup is a leading global bank that provides consumers, corporations,
governments and institutions with a broad range of financial products and services.
2. Complainant has registered trademark rights in the CITI BEYOND Marks by virtue of Mexican registration numbers 935636 (registered December 20, 2005) and 933896 (registered May 23, 2006) covering “credit card services.” Citigroup has made extensive use of the CITI BEYOND Marks by providing Complainant’s services and an affinity marketing program throughout Mexico and around the world.
3. Respondent registered the disputed domain name on February 16, 2006 and has used it in conjunction with a website which features ads for Complainant’s direct competitors.
3. Complainant has not given Respondent any license, permission, or
authorization by which Respondent could make any use of any of its marks.
4. The Offending Domain is nearly identical and confusingly similar to Complainant’s mark because it fully incorporates Complainant’s CITI BEYOND mark.
5. Respondent has no rights or legitimate interests in the Offending Domain.
(a) Respondent lacks rights or legitimate interests in the Offending Domain.
(b) Respondent has never been commonly known as “citibeyond.com”.
(c) 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 it.
(d) Respondent uses the disputed domain name in conjunction with a website which includes advertisements for competing credit card services. Such use is not a bona fide offering of goods or services or a legitimate non commercial or fair use.
(e) Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks.
6. Respondent registered and uses the disputed domain name in bad faith.
(a) Respondent had actual knowledge of Complainant’s mark, as evidenced by
Respondent’s use of the CITI BEYOND Mark in his domain name.
(b) Respondent’s use of the disputed domain name to advertise links to related products constitutes bad-faith registration and use under Policy ¶ 4(b)(iii).
B. Respondent
Respondent
Respondent failed to submit a Response in this proceeding.
3. Respondent registered the disputed domain name on February 16, 2006 and has used it in conjunction with a website which features ads for Complainant’s direct 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."
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.
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.).
The first question that arises is whether Complainant has rights in a trademark or
service mark. Complainant argues that it has established rights in the CITI BEYOND mark. In support of that submission, Complainant adduces evidence of Corsearch printouts of the registration certificate for Mexican registration numbers 935636 (registered December 20, 2005) and 933896 (registered May 23, 2006),for the CITI BEYOND trademarks owned by Citigroup covering “credit card services.” The Panel accepts that evidence as it is now well established that a complainant may prove its trademark rights on the basis of registration of a trademark in any country, in the present case in Mexico. See for example, Bernardka Pulko v. Greg Frazier , WIPO Case No. D2006-0099, where the trademark was registered in Slovenia. See also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CITI BEYOND mark. Complainant argues that Respondent’s domain name is nearly identical or confusingly similar to Complainant’s CITI BEYOND mark as it consists of the entire mark. The Panel notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com” and that the gap between the two words in the trademark has been removed. Those considerations are irrelevant for present purposes and for that reason the Panel finds that the domain name is identical to the trademark under Policy ¶ 4(a) (I). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arab. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerber, FA 780200 (Nat. Arab. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CITI BEYOND trademark and to use it in its domain name in its entirety;
(b) Respondent has then used the domain name in conjunction with a website which features advertisements for Complainant’s direct competitors;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant submits that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “SEA Servicios Especializados de Asistencia, SACV”. The Panel also notes that Respondent has failed to offer any evidence to establish that it is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c) (ii). See 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);
(e) Complainant also submits that 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. Complainant alleges that Respondent uses the domain name in conjunction with a website which includes advertisements for competing credit card services. Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Citigroup Inc. v. Horoshiy, Inc. a/k/aHoroshiy, FA0406000290633 (Aug. 11, 2004) (“Respondent’s use of domain names that are confusingly similar to Complainant’s CITIBANK marks to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine and products and services that compare with those offered by Complainant is 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 of the domain names pursuant to Policy ¶ 4(c)(iii).”). The Panel accepts Complainant’s submission and the evidence on which it is based and concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c) (iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent had actual knowledge of Complainant’s mark, as evidenced by Respondent’s use of the CITI BEYOND mark in its domain name and that the mere fact that Respondent has registered a domain name which incorporates the famous trademark of a well known
company is alone sufficient to give rise to an inference of bad faith. Complainant cites in support of this proposition Northwest Airlines, Inc., v. Mario Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“The selection of a domain name which entirely incorporates the name of the world’s fourth largest airline could not
have been done in good faith”). The Panel agrees with the Complainant’s submission and so finds.
Complainant also submits that Respondent’s use of the disputed domain name to advertise links to related products constitutes bad-faith registration and use under Policy ¶ 4(b)(iii) and it is clear that this is so, as such conduct must disrupt Complainant’s business. One of the decisions cited by Complainant on this issue makes that very clear: Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii) [and] (iv).”).
Finally, the facts of the case bring it squarely within the provisions of Policy ¶ 4(b)(iv) as Complainant submits, as the disputed domain name has been used to intentionally attract, for commercial gain, Internet users to Respondent’s website or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citibeyond.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 5, 2013
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