Citigroup Inc. v. Creative Citygroup Inc.
Claim Number: FA1306001504889
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Creative Citygroup Inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <creativecitigroup.com>, registered with TUCOWS, INC.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2013; the National Arbitration Forum received payment on June 20, 2013.
On June 14, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <creativecitigroup.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 June 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@creativecitigroup.com. Also on June 24, 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 July 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
i. Respondent has never been commonly known as <creativecitigroup.com> and has never used any trademark or service mark similar to the offending domain by which he or she may have come to be known, other than the infringing use noted herein. Respondent has not been granted permission or authorization from Complainant to own or use domain name registrations that are confusingly similar to Complainant’s mark.
ii. Respondent uses the offending domain name in conjunction with a website which prominently uses the CITIGROUP mark to advertise its services.
i. The offending domain name has been put to use 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.
ii. Respondent had actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., is a leading global bank. Complainant provides consumers, corporations, governments, and institutions a broad range of financial products and services. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the CITIGROUP mark (Reg. No. 2,406,753, registered November 21, 2000), as well as the CITI mark (Reg. No. 1,181,467 registered Dec. 8, 1981).
Respondent, Creative Citygroup Inc., registered the offending domain name on June 24, 2008. Respondent uses the offending domain name in conjunction with a website which prominently uses the CITIGROUP mark to advertise Respondent’s 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."
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 Panel finds that Complainant’s registration of the CITIGROUP mark with the USPTO sufficiently proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006)(“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that the <creativecitigroup.com> domain name is nearly identical and confusingly similar to Complainant’s mark because it fully incorporates Complainant’s CITIGROUP mark. Respondent adds the generic term “creative” to Complainant’s mark in its disputed domain name. Respondent’s addition of a generic term does not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Respondent adds the generic top-level domain (“gTLD”) “.com” to its disputed domain name. However, Respondent’s addition of a gTLD to its domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel finds that Respondent’s <creativecitigroup.com> domain name is confusingly similar to Complainant’s CITIGROUP mark pursuant to Policy ¶ 4(a)(i).
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. Arb. 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).
Complainant claims that Respondent has never been commonly known as <creativecitigroup.com>. The WHOIS record lists “Creative Citygroup Inc.” as the registrant of the disputed domain name. Although Respondent appears to be known by a variation of the domain name according to the WHOIS information, there is no other evidence in the record suggesting that Respondent is commonly known by the domain name. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Moreover, Complainant makes the claim that Respondent has not been authorized to use the CITIGROUP mark in a domain name. Therefore, the Panel finds that Respondent is not commonly known by the <creativecitigroup.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent uses the offending domain name in conjunction with a website which prominently uses the CITIGROUP mark to advertise Respondent’s services. Respondent states “Creative Citigroup is a full service tradeshow exhibit management company” on its <creativecitigroup.com> website. Respondent’s use of the disputed domain name is unrelated to Complainant’s business. The Panel finds that Respondent is not using the <creativecitigroup.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent uses the <creativecitigroup.com> domain name to advertise Respondent’s own goods and services, causing consumer confusion and resulting in bad faith registration and use under Policy ¶ 4(b)(iii). Respondent is using the domain name to advertise a “full service tradeshow exhibit management company.” Respondent’s use of the domain name disrupts Complainant’s business. Therefore, the Panel finds that Respondent has registered and is using the <creativecitigroup.com> domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that the offending domain name has been put to use 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 contends that Respondent is using the <creativecitigroup.com> domain name to advertise Respondent’s own goods and services in a manner that trades on Complainant’s goodwill and creates consumer confusion. Prior panels have determined that a respondent’s use of a domain name to divert Internet users to its own website demonstrates bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Thus, the Panel finds that Respondent’s use of the <creativecitigroup.com> domain name evidences bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant’s mark, as evidenced by Respondent’s use of Complainant’s CITIGROUP marks in its domain name. The Panel finds that Respondent’s use of Complainant’s mark in the disputed domain name, as well as its use of the mark throughout the resolving website, demonstrates that Respondent had actual knowledge of Complainant's mark and rights. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <creativecitigroup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 1, 2013
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