Citigroup Inc. v. Nicholas Bonner
Claim Number: FA1502001604916
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Katten Muchin Rosenman LLP, District of Columbia, United States. Respondent is Nicholas Bonner (“Respondent”), Louisiana, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citigroup.technology>, registered with GoDaddy.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 Forum electronically on February 13, 2015; the Forum received payment on February 13, 2015.
On February 13, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citigroup.technology> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 February 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2015 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@citigroup.technology. Also on February 18, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant made the following submissions.
Complainant uses the CITIGROUP mark in connection with its multinational banking and financial services. Complainant has registered the CITIGROUP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,406,753, Registered Nov. 21, 2000), which demonstrates its rights in the mark. The <citigroup.technology> domain name is confusingly similar to the CITIGROUP mark as the domain name merely adds the generic top-level domain (“gTLD”) “.technology.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <citigroup.technology> domain name nor is it known by any variant of the CITIGROUP mark. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. Instead, the disputed domain name originally resolved to a page that displayed an offer to sell the domain name from its registration date through about Sept. 5, 2014, and now the domain resolves to an inactive page displaying “under construction.” See Compl., at Attached Exs. H, I.
Respondent has registered and has used the disputed domain name in bad faith. Respondent purported to offer to sell the domain name to Complainant or a competitor. Respondent’s use of the <citigroup.technology> domain name constitutes an inactive holding because the resolving page displays that the page is “under construction.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 on which it may rely. Complainant submits that it uses the CITIGROUP mark in connection with its multinational banking and financial services. Complainant has adduced evidence which the Panel accepts that it registered the CITIGROUP mark with the USPTO (e.g., Reg. No. 2,406,753, Registered Nov. 21, 2000), and it claims such registration demonstrates its rights in the mark. The Panel agrees that Complainant’s registration of the CITIGROUP mark with the USPTO evinces rights in the mark for purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CITIGROUP mark. Complainant argues that the <citigroup.technology> domain name is confusingly similar to the CITIGROUP mark because the domain simply adds the gTLD “.technology” to the mark. Previous panels have found that the addition of gTLDs to registered trademarks are unpersuasive in overcoming a Policy ¶ 4(a)(i) finding of confusing similarity that is otherwise present, as it is in the present case. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel agrees that the <citigroup.technology> domain name that was registered by Respondent is confusingly similar to the CITIGROUP mark because the domain simply adds the “.technology” gTLD, leaving the overall impression that the domain name is an official domain name of Complainant.
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. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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 CITIGROUP
trademark and to use it in its domain name, making no substantive alterations;
(b) Respondent registered the disputed domain name on February 19, 2014. From the registration of the disputed domain name through about Sept. 5, 2014, it resolved to a page that displayed an offer to sell the domain name and now it resolves to an inactive page displaying “under construction.”;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant, in arguing that Respondent has no rights or legitimate interests in the <citigroup.technology> domain name, submits that Respondent is not commonly known by the disputed domain name or any variation of the CITIGROUP mark. The Panel notes that the WHOIS information lists “Nicholas Bonner” as registrant. See Compl., at Attached Ex. A. As Respondent has failed to adduce any evidence to the contrary for the Panel’s consideration, the Panel finds no basis on the evidence to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
(e) Complainant claims Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Complainant alleges that the disputed domain name originally directed users to a page with an offer to sell the domain name. See Compl., at Attached Ex. H. Complainant further asserts that since Sept. 5, 2014 the disputed domain has resolved to a page displaying “under construction,” which constitutes an inactive holding,. See Compl., at Attached Exs. I, J. Previous panels have found that a disputed domain simply displaying an offer to sell the domain name to the highest bidder does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). Further, previous panels have agreed that pages which are “under construction” cannot be considered to be an actual use of the domain name and that this use constitutes an inactive holding per Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)). Therefore, the Panel agrees that Respondent’s initial offer to sell the <citigroup.technology> domain name along with the subsequent failure to make an active use of the domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and nor does it evince rights or legitimate interests per Policy ¶ 4(a)(ii).
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 argues that Respondent has engaged in behavior constituting bad faith under Policy ¶ 4(b)(i). Complainant alleges that Respondent initially used the disputed domain name to resolve to a page that displayed an offer to sell to the highest bidder, stating, “CITIGROUP.TECHNOLOGY is available for sale!” and providing a webform for potential buyers to “Submit Your Offer!” See Compl., at Attached Ex. H. Complainant cites to Vanguard Trademark Holdings USA LLC v. Parris, FA 1589308 (Nat. Arb. Forum Dec. 26, 2014), where the panel found that “[b]ad faith exists based on the Respondent’s general offer to sell the disputed domain name . . . Accordingly, the Panel finds Respondent’s willingness to sell the . . . domain name is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(i).” See also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Secondly, Complainant also contends that in light of the fame and notoriety of Complainant's CITIGROUP mark, it is inconceivable that Respondent could have registered the <citigroup.technology> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel notes that arguments of bad faith based on constructive notice have generally been found to be inconclusive, and that UDRP decisions have in such cases declined to find bad faith on that basis alone. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that because of the prominence of Complainant’s name, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Moreover, as Complainant submitted and the Panel agrees, the domain name was registered during the new gTLD Trademark Claims service Period, Respondent received a Trademark Claims Notice prior to registering the Disputed Domain Name, and Respondent was thus required to have affirmatively acknowledged the claim when presented with the Trademark Claims Notice, putting it on actual notice of Complainant’s rights. The Panel therefore finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii) and that it has been shown in the present case. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Thirdly, Complainant contends that Respondent’s inactive holding of the <citigroup.technology> domain name constitutes bad faith pursuant to Policy ¶ 4(a)(iii). Past panels have held that when resolving pages of disputed domain names direct to a web page that is “under construction,” a finding of bad faith under Policy ¶ 4(a)(iii) is appropriate. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). This Panel agrees that because Respondent’s <citigroup.technology> domain name resolves to a page displaying no content other than “under construction,” a finding of bad faith due to inactive holding under Policy ¶ 4(a)(iii) is appropriate.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CITIGROUP mark and in view of its conduct since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
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 <citigroup.technology> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 18, 2015
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