Citigroup Inc. v.
Claim Number: FA0806001210904
PARTIES
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citi-nri.com>
and <diamondpreferred.com>, registered with Compana, LLC.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 19, 2008; the National Arbitration Forum received a hard
copy of the Complaint on June 20, 2008.
On June 23, 2008 and August 5, 2008, Compana, LLC confirmed by e-mail
to the National Arbitration Forum that, respectively, the <citi-nri.com> and <diamondpreferred.com> domain names are registered with Compana, LLC and that the Respondent
is the current registrant of the names. Compana, LLC has verified that Respondent is
bound by the Compana, LLC registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 26, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 16, 2008 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@citi-nri.com and
postmaster@diamondpreferred.com by e-mail.
A timely Response was received and determined to be complete on July
16, 2008.
On July 22, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends as follows:
Citigroup is the world-renowned financial services company that owns an
extensive family of famous trademarks and service marks comprised of or
featuring the CITI trademark (the "CITI Marks"). In addition to the
The CITI Marks represent to the worldwide consuming public the goods
and services offered by Complainant and its affiliates and/or licensees. Complainant has made extensive use of these
marks by providing its services throughout the
Complainant's Marks have become famous under the laws of the
The <diamondpreferred.com> domain
name was registered more than two years after Complainant's registration issued
for the DIAMOND PREFERRED mark. The <citi‑nri.com>
domain name was registered decades after Complainant began extensive
marketing of its goods and services under its CITI marks. Complainant has not given Respondent any
license, permission, or authorization by which Respondent could make any use of
any of its marks. Each of the at-issue
domain names resolves to websites featuring links promoting competing financial
services.
The at-issue domain names are nearly identical and confusingly similar to Complainant's Marks. The
<diamondpreferred.com> domain name is identical to and confusingly
similar to Complainant's mark since it consists entirely of Complainant's
DIAMOND PREFERRED mark and the “.com” TLD. The <citi‑nri.com> domain
name is confusingly similar to Complainant's CITI Marks since it consists
entirely of Complainant's CITI mark and the industry related term
"nri" and also a "-."
Respondent lacks rights or legitimate interest in the at-issue domain
names. Respondent, refers to himself in
the WHOIS database as "Texas International Property Associates – NA NA"
and has never been commonly known as any of the domain names nor any variations
thereof, and has never used any trademark or service mark similar to the domain
names by which it may have come to be known, other than the infringing use
noted herein.
Respondent has never operated any bona
fide or legitimate business under any of the at-issue domain names and is
not making a protected noncommercial or fair use of the at-issue domain names. Upon information and belief, Respondent
receives click-through fees through the use of the domain names by diverting
Internet users searching for Complainant to Complainant's competitors. Such use is not a bona fide or legitimate business use.
Respondent registered and used the domain names in bad faith because
the fact that Respondent was using the confusingly similar domain names to
attract Internet users to its commercial website infers such use.
Respondent was undoubtedly aware of Complainant's Marks prior to the
registration of the domain names, given their considerable registration and/or
use. Because Respondent had notice of
Complainant's trademark rights when registering domain names nearly identical
and/or confusingly similar to those marks, Respondent has no rights or
legitimate interest in the domain names.
Complainant has not granted Respondent any license, permission, or
authorization by which he could own or use any domain name registrations, which
are confusingly similar to any of Complainant's Marks.
Respondent registered and is using the at-issue domain names in bad
faith. Given the considerable
registration and use of Complainant's Marks, Respondent knew or should have
known of such marks at all relevant times. Accordingly, Respondent had actual or
constructive knowledge that the domain names, which mimic and/or incorporate
Complainant's registered marks, are confusingly similar to Complainant's Marks.
Further, the WHOIS record reflects that Respondent has a
Given the considerable registration and/or use of Complainant's Marks,
Internet users are likely to be induced to believe that the at-issue domain
names connect to websites associated with or sponsored by Complainant.
Further, on information and belief, Respondent receives ad revenue from
the advertisements found on the website to which the at-issue domain names
resolve, and therefore Respondent is using the at-issue domain names in bad
faith, in an attempt to attract maximum traffic to the site for commercial
gain. Such a pattern is one of the four
explicit examples of bad faith registration and/or use set forth in Policy ¶
4(b)(iv).
Also, Respondent's actions reveal a pattern of abusive registrations
designed to prevent Complainant from reflecting its marks in domain names. Not only has Respondent
registered the two at-issue domain names, Respondent were named in over 70 UDRP
complaints. This history of
cybersquatting on a grand scale reflects a flagrant disregard for intellectual
property rights of others and is further evidence of Respondent's bad faith in
this matter. Finally, even if Respondent
argues that Respondent was somehow unaware of Complainant's rights in the
relevant marks, had Respondent conducted even a preliminary trademark search,
it would have found Complainant's various trademark registrations in
Complainant's Marks and the websites associated with the marks, and
numerous additional references in commerce, on the Internet, and in publications,
evidencing Complainant's use of its marks in connection with Complainant's
services.
B. Respondent
Respondent contends as follows:
Prior to the institution of this proceeding,
Complainant had never contacted Respondent to complain about the disputed
domain names. Had Complainant contacted
Respondent, Respondent would have agreed to transfer the disputed domains and
Complainant could have saved
itself the cost of this filing as well as the cost of the preparation of the
Complaint. Respondent agrees to the
relief requested by the Complainant and will, upon
order of the Panel, do so. Respondent
does not admit to the three elements of 4(a) of the policy but rather offers a
“unilateral consent to transfer” as prior Panels have deemed it.
FINDINGS
Complainant has demonstrated that it has
rights in the at-issue domain names by virtue of its trademark registrations
and otherwise.
Respondent consents to having the at-issue
domain names transferred to Complainant. The Panel notes that in its Response, the Respondent refers to the
“domain name” rather than the “domain names.”
The Panel presumes this to be a typographical error since the Complaint
concerns two domain names, and the caption on both the Complaint and Response
names two at-issue domain names.
The Complaint neither objects to consensual
transfer nor requests that the Panel render its decision based on an analysis
of each of the substantive Policy elements.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Notwithstanding the foregoing, a panel may also grant the complainant’s requested relief when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”). As a prerequisite to obtaining the relief requested, even where, as here, Respondent consents to such relief, Complainant must at least demonstrate pursuant to Policy ¶4(a)(i) that it has rights in the at-issue domain name(s). This it has done.
Respondent unequivocally agrees to transfer the at‑issue
domain names to Complainant. Complainant
has rights in such domain names. In
light thereof, this Panel does not see any basis warranting further substantive
analysis regarding the Paragraph 4(a) elements. Judicial economy dictates that
the Panel should simply proceed to its decision since there is no dispute
between the parties. Thus, this Panel
disagrees with the proposition that even though a respondent consents to
transferring an at-issue domain name, a substantive review may be
required. See Graebel
Van Lines, Inc. v.
Judicial economy and the very purpose of the UDRP demands expeditious
and economical resolution of UDRP disputes. A
respondent that consents to requested relief avoids having to expend the time
and resources necessary to respond. Furthermore,
having consented to the relief requested, the respondent’s pleadings will
normally not offer a substantive defense. Why should it? A panel’s focus on Policy 4(a) elements in a
dispute where the respondent avoids a substantive response for reasons of
economy may thus result in a bias toward the complainant’s position.
Alternatively, requiring a respondent that consents to the requested relief to
substantively respond to a complaint or face a decision and adverse findings
based solely on the aversions of the complainant does not further the UDRP’s
interest in providing an abbreviated economical procedure for resolving domain
name disputes.
Importantly,
the singularly narrow task before this Panel is to determine whether or not the
requested relief should be granted, denied or dismissed.
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be
limited to requiring the cancellation of [the] domain name or the
transfer of [the] domain name registration to the complainant.
Policy ¶ 4(i) (emphasis added).
A panel’s
only purpose in rendering substantive Paragraph 4(a) findings is relegated to
that end, and that end alone. What amounts to advisory opinions are not
authorized by the Policy, Rules, or otherwise.
Therefore, when a respondent consents to a complainant’s requested
relief and that complainant has rights in the at-issue domain name(s), then
only under particular circumstance that call into question the validity of the respondent’s
consent, or for similar other good cause, might a panel need to proceed to
consider the merits of the complaint via further analysis under Paragraph 4(a).
Such circumstances are not present in
the instant dispute, and so the requested relief must be granted.
DECISION
Having established that Complainant has an interest in the domain names
and that Respondent consents to the requested relief, the Panel concludes that
relief shall be GRANTED.
Accordingly, it is Ordered that the <diamondpreferred.com> and <citi-nri.com>
domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 5, 2008
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