Citigroup Inc. v. Wang Jingyan
Claim Number: FA1503001609837
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Katten Muchin Rosenman LLP, District of Columbia, USA. Respondent is Wang Jingyan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citigroup.wang>, registered with Xin Net Technology Corporation.
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.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2015; the Forum received payment on March 16, 2015.
On March 17, 2015, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <citigroup.wang> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 23, 2015, the Forum received an Amended Complaint and all Amended Annexes, including a Written Notice of the Complaint in the Chinese language, setting a deadline of April 13, 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.wang. Also, on March 23, 2015, the Forum served the Amended Complaint and all Amended Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 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.wang. Also on March 23, 2015, the Written Notice of the Amended 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. Also, on March 23, 2015,
A timely Response was received and determined to be complete on April 13, 2015.
On April 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, CITIGROUP, is a United States Corporation with global headquarters in New York, NY. Complainant was founded in 1812. As of 2008, Complainant is the 3rd largest bank holding company in USA by assets.
Complainant has registered the CITIGROUP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,406,753, registered November 21, 2000), as well as China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,452,796, registered October 7, 2000; see also Reg. No. 6,119,687, registered February 7, 2014). The mark is used on or in connection with banking services.
The <citigroup.wang> domain name is identical to the CITIGROUP mark because it contains the entire mark and differs only by the addition of the generic top-level domain (“gTLD”) “.wang.”
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name or in possession of licensing rights. Further, Respondent has failed to make an active use of the disputed domain name.
Complainant argues that Respondent has engaged in bad faith registration and use. Respondent has engaged in a pattern of bad faith registrations with other famous marks, Respondent has failed to actively use the disputed domain name, and Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CITIGROUP mark.
B. Respondent
Respondent makes no contentions with regard to Policy ¶ 4(a)(i).
Respondent claims it has rights or legitimate interests in the disputed domain name because it was registered in order to plan a website for China Information and Technology Index Group, a company that will provide information for IT enthusiasts.
Respondent has not acted in bad faith because it has rights or legitimate interests in the disputed domain name.
Rule 11(a) of the Rules provide that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Registration Agreement is in the Chinese language. The Complainant submitted the Complaint in both the English and Chinese language. The Respondent also submitted the Response and additional submission in both the English and Chinese languages. Some of the documents in this case are in English and some in Chinese and it is clear that the disputed domain name uses English characters. The disputed domain name refers to the combination of the words "citi" and "group", the first is a misspelling of the English word City and the second is also an English word. Taking regard of the circumstances of this case, including, but not limited to the language of the Registration Agreement and the proceedings, the language of the disputed domain name, the language of this decision will be English.
The panel finds as follows:
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.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
Complainant has registered the CITIGROUP mark with the USPTO (e.g., Reg. No. 2,406,753, registered November 21, 2000), as well as the SAIC (e.g., Reg. No. 1,452,796, registered October 7, 2000; see also Reg. No. 6,119,687, registered February 7, 2014). The mark is used on or in connection with banking services. The Panel finds that registration with the USPTO or SAIC is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see alsoNorgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
The disputed domain <citigroup.wang> is identical to the CITIGROUP mark because it contains the entire mark and differs only by the addition of the second level domain (“SLD”) “.wang.” As a general rule, the addition of a gTLD cannot distinguish a domain name from the mark at issue. 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).
The addition of the gTLD “.wang” to the disputed domain name does not avoid confusing similarity. See Guess? IP Holder L.P. and Guess?, Inc. v. JOHN MCCORK, FA 1557430 (Nat. Arb. Forum June 2, 2014) (finding that the addition of the generic top-level domain “.net” did not distinguish Respondent’s domain name from Complainant’s mark, and thus, the domain name was confusingly similar to Complainant’s mark).
Consequently, the Panel finds that Complainant has shown that the disputed domain name is identical to the trademark in which Complainant has rights.
Under the Policy ¶ 4(a)(ii), it is up to the Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and only 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.”).
Complainant asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the CITIGROUP mark in domain names. The Panel notes that “Wang Jingyan” is listed as the registrant of record for the disputed domain name. See Compl., at Attached Ex. B. Complainant also contends that the “.wang” portion of the disputed domain name does not refer to Respondent, but rather is the translation for a generic Chinese word meaning “web,” “website,” or “portal.” The Panel notes that the record is void of any additional evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to
consist of a bona fide offering or goods or services or a legitimate
noncommercial or fair use. To support this argument, Complainant argues that
Respondent has failed to make an active use of the <citigroup.wang>
domain name. Complainant has provided a screenshot of the resolving
webpage, which displays a message reading “ERROR: The requested URL could not
be retrieved.” Prior panels have found that a respondent cannot obtain rights
under Policy ¶¶
4(c)(i) or (iii) if they fail to make an active use of the domain name at
issue. See Thermo
Electron Corp. v. Xu,
FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s
non-use of the disputed domain names demonstrates that the respondent is not
using the disputed domain names for a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent
has failed to make active use of the disputed domain name, and therefore finds
that Respondent lacks rights or legitimate interests under Policy ¶¶ 4(c)(i)
and (iii).
The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. First Complainant argues that Respondent has acted in bad faith under Policy ¶ 4(b)(ii) by displaying a pattern of bad faith registrations. To support this claim, Complainant has attached a reverse WHOIS search report linked to the Respondent’s email address which shows Respondent’s portfolio of domain name registrations. See Compl., at Attached Ex. L. Complainant points out that Respondent has registrations for the following domain names: <exxonmobile.wang>, <fordmotor.wang>, and <generalmotors.wang>. See Id. Prior panels have found that a respondent’s registration of third party domains containing famous marks can be evidence of bad faith. See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). The Panel finds that Respondent’s other domain name registrations contain famous third party marks, this is a clear evidence of Respondent’s bad faith under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent’s bad faith is shown by its failure to actively use the disputed domain name. The Panel recalls that Complainant has provided a screenshot of the resolving webpage, which displays a message reading “ERROR: The requested URL could not be retrieved.” Prior panels have found that the failure of a respondent to actively use the domain name at issue can consist of bad faith under the Policy. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). Thus, the Panels finds that Respondent has failed to actively use the disputed domain name, and therefore finds that Respondent has acted in bad faith.
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.wang> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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 that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). 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)."
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.wang> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: 12 May 2015
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