Citigroup Inc. v. Orinoco 360 LLC
Claim Number: FA1511001650076
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Orinoco 360 LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.holdings>, registered with Marcaria.com International, Inc.
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.
Anne M. Wallace QC, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2015; the Forum received payment on November 30, 2015.
On November 30, 2015, Marcaria.com International, Inc. confirmed by e-mail to the Forum that the <citi.holdings> domain name is registered with Marcaria.com International, Inc. and that Respondent is the current registrant of the name. Marcaria.com International, Inc. has verified that Respondent is bound by the Marcaria.com International, 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 December 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@citi.holdings. Also on December 3, 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.
A timely Response was received and determined to be complete on December 22, 2015.
On December 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits:
B. Respondent
Respondent submits:
1. Complainant has rights in the CITI mark. The Disputed Domain Name is confusingly similar to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the Disputed Domain Name.
3. Respondent has registered and is using the Disputed Domain Name in bad faith.
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.
Complainant has rights in the CITI mark stemming from registration of the mark with the USPTO (e.g., Reg. No. 1,181,467 registered December 8, 1981). See :
Complainant’s USPTO registrations serve as adequate proof of rights in the CITI mark under Policy ¶ 4(a)(i).
Other than the addition of the gTLD
“.holdings”, Respondent’s <citi.holdings>
domain is identical to the CITI
mark. Panels consistently find that the addition of a gTLD does not distinguish
a domain from a mark. See:
Furthermore, the “.holdings” addition may actually add to confusing similarity as Complainant is known for its financial holdings-related services. See, e.g.:
The Panel therefore concludes the disputed domain is identical/confusingly similar to the CITI mark per 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:
Complainant has not authorized Respondent to use the CITI marks in any manner, nor has Respondent been commonly known by the Disputed Domain Name. WHOIS information associated with Respondent’s Disputed Domain Name identifies Respondent as “Orinoco 360 LLC,” which does not in any way resemble the Disputed Domain Name. A respondent is not commonly known by a disputed domain where there is no evidence in the record to the contrary. See:
· Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant has met the initial burden to establish prima facie that Respondent does not have rights or legitimate interests.
Respondent has not made active use of the disputed domain. This does not constitute bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s domain, as of October 30, 2015, directs to an inactive website displaying the text “This webpage is not available.” Inactive use of a disputed domain is not considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See:
· LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (finding that the respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when the respondent might be capable of doing otherwise);
· Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).
Here Respondent says it is considering developing a business for storage for city dwellers. Respondent provided no evidence of any plans for such business and provided no explanation for why it chose Complainant’s CITI mark for its domain rather than the descriptive word CITY. Respondent has not established rights or legitimate interests in the Disputed Domain Name. Complainant succeeds on the second element.
Complainant’s information shows Respondent has prevented Complainant from reflecting its CITI mark in the “.holdings” gTLD and has demonstrated a pattern of such conduct by registering other domains reflecting third-party marks. From the time of registration on February 6, 2014, the Disputed Domain Name has never resolved to any active website. Complainant’s reverse WHOIS search shows Respondent has registered some domains that appear to include third-party marks such as, <gopro.gallery>, <aurizon.holdings>, <delek.holdings>, and <utrecht.holdings>. While there is no evidence before the Panel of past findings of bad faith against this Respondent, the evidence does show multiple domains registered using other marks. The information before the Panel establishes on balance that Respondent has engaged in a pattern of registering trademark related domain names. In the absence of any explanation from Respondent, the Panel finds this is bad faith registration and use. See:
Complainant also contends that in light of the fame and notoriety of Complainant's CITI mark, it is inconceivable Respondent could have registered the <citi.holdings> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Any arguments of bad faith based on constructive notice are irrelevant. See:
The Panel, however, finds Complainant has established Respondent had actual knowledge of Complainant's rights in the mark prior to registering the Disputed Domain Name. Respondent was on notice of Complainant’s CITI Marks prior to registering the
Disputed Domain Name, given the Trademark Claims notification Respondent received just prior to registering the Disputed Domain Name. In addition, Complainant’s rights in the CITI Mark are so well established, and its CITI brand has achieved a level of recognition and fame such that Respondent has no colorable argument that he is unaware of the CITI brand. The Disputed Domain Name is only valuable because of its association with the CITI brand. In this context, Respondent’s passive holding of the Disputed Domain Name evidences bad faith registration and use. See:
In all the circumstances, the Panel is satisfied Complainant has established Respondent has registered and is using the Disputed Domain Name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, the Panel hereby orders that the <citi.holdings> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace QC, Panelist
Dated: January 5, 2016
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