Citigroup Inc. v. Nathan Edwards
Claim Number: FA1511001650085
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt, of Mayer Brown LLP, District of Columbia, USA. Respondent is Nathan Edwards (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citigroup.holdings>, 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.
Jeffrey M. Samuels, 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, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citigroup.holdings> 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 December 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 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.holdings. Also on December 2, 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 2, 2015.
A timely Additional Submission was submitted by Complainant on December 7, 2015. A timely Additional Submission was received from Respondent on December 8, 2015.
On December 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels 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 Inc. is a multinational banking and financial services corporation headquartered in New York, New York. As of 2014, Citigroup was the 14th largest bank holding company in the world by assets and the seventh largest by market capitalization.
Complainant owns numerous U.S. and other registrations for the CITIGROUP trademark, which it has used in connection with banking and financial services since at least as early as 1998. In 2015, Forbes ranked CITIGROUP the 81st most valuable brand in the world. Complainant also owns a number of domain names that incorporate the CITIGROUP mark, including <citigroup.com>, <citigroup.management>, and <citigroup.consulting>.
The CITIGROUP marks have been recorded in the Trademark Clearinghouse (TMCH). Thus, the CITIGROUP mark triggers Trademark Claims Notices to any would-be domain name registrant attempting to register a domain name in any new generic top level domain during the gTLD’s Trademark Claims period that matches the CITIGROUP mark. The Trademark Claims period for .holdings gTLD ran from January 27, 2014 to April 29, 2014. The disputed domain name was registered to Respondent on February 5, 2014. In accordance with TMCH procedures, Respondent would have received a Trademark Claims Notice prior to registering the disputed domain name and was required to have affirmatively acknowledged the Notice in order to proceed with the registration of the domain name and to represent that, to the best of his knowledge, the registration and use of the domain name will not infringe on certain trademark rights.
Respondent registered the disputed domain name with GoDaddy LLC. According to Complainant, the domain name originally resolved to a GoDaddy parked page containing sponsored advertising links, including those of Complainant’s competitors, but which did not resolve to any active website. On August 29, 2014, Complainant’s counsel sent a “cease and desist” letter demanding that Respondent stop using the disputed domain name and transfer it to Complainant. Having received no response, Complainant’s counsel sent a second “cease and desist” letter to Respondent. Respondent failed to respond to this letter as well.
Complainant asserts that the disputed domain name, <citigroup.holdings>, is identical or confusingly similar to the CITIGROUP marks in which Complainant has well-established rights. Complainant highlights the fact that the disputed domain name consists of the word “CITIGROUP,” which is identical to its CITIGROUP mark. Complainant contends that the addition to the disputed domain name of the top-level domain “.HOLDINGS” is insufficient to escape a finding of confusing similarity.
Complainant further contends that Respondent has no rights or legitimate interests in connection with the disputed domain name. It maintains that Respondent has never been authorized by Complainant to use the CITIGROUP marks, that the disputed domain name does not reflect Respondent’s common name, and that the disputed domain name, which has never resolved to any active website and has never provided any content, may not be considered as being used in connection with bona fide offering of goods and services.
Finally, Complainant argues that the disputed domain name was registered and is being used in bad faith. Complainant contends that, by using the disputed domain name in connection with a parked page containing sponsored pay-per-click advertising links, Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s online location, by creating a likelihood of confusion with Complainant’s marks, and that such action falls within the parameters of paragraph 4(b)(iv) of the Policy.
Complainant further maintains that its CITIGROUP mark has achieved a level of recognition and fame such that Respondent must be considered to have been aware of the CITIGROUP brand. “In this context, Respondent’s later long-term passive holding of the Disputed Domain Name evidences bad faith registration and use.”
Complainant also notes that Respondent was on notice of Complainant’s CITIGROUP mark prior to registration of the disputed domain name, given the Trademark Claims notification Respondent received just prior to registration of the domain name. According to Complainant, this is further evidence of bad faith registration and use, as is Respondent’s failure to respond to Complainant’s “cease and desist” letters and his use of a proxy service.
B. Respondent
Respondent contends that he was not aware that GoDaddy was going to point his domain name to a parking page and that, after receiving the first “cease and desist” letter from Complainant’s counsel, instructed GoDaddy to point away from the park page. Respondent asserts that he has no intention, and has never used the domain name, to host a site that has anything to do with any area Complainant works within.
Respondent indicates that “[i]f Citigroup [is] so passionate about this domain why would they have not purchased it during the window of time they could have. Instead their tone left me and a GoDaddy rep. to feel simply that they were trying to bully it out of me for free by using intimidation.” According to Respondent, if Complainant had explained its reasons for wanting the domain and offered to reimburse me for my cost, “I would very likely have transferred it.”
C. Additional Submissions
In its Additional Submission,[1] Complainant indicates that a domain name registrant is normally deemed responsible for any content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content. Moreover, Complainant adds, Respondent was put on actual notice of GoDaddy’s automatic redirection through the GoDaddy Registration Agreement.
Complainant also contends that it was under no obligation to purchase a domain name reflecting its marks. “Rather, third parties have an affirmative obligation to avoid infringing upon the marks of others.”
In an Additional Submission, Respondent states that he “had no intent on using the domain in a way that would be considered `bad faith’. I also don’t see why I am given a timeframe to use the domain by.”
The Panel finds that: (1) the disputed domain name, citigroup.holdings, is confusingly similar to the CITIGROUP mark and that Complainant has rights in such mark; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain name was registered and is being used 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.
The Panel concludes that the disputed domain name, <citigroup.holdings>, is confusingly similar to the CITIGROUP mark. The domain name incorporates in full the CITIGROUP mark and the addition of the top-level domain “.holdings” does not sufficiently distinguish the domain name so as to avoid a finding of confusing similarity. See Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding pomellato.com identical to complainant’s mark because the generic top-level domain .com after the name POMELLATO is not relevant.).
The Panel further finds that Complainant has rights in the CITIGROUP mark. The evidence establishes that Complainant owns U.S. trademark registrations for the mark CITIGROUP and that such mark has been used by Complainant since at least as early as 1998. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights.).
The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The evidence establishes that the disputed domain name formerly resolved to a parked page containing pay-per-click links and currently resolves to an inactive page. Respondent’s use of the domain name in connection with a pay-per-click site does not constitute use of the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services.).
While Respondent argues that it was not responsible for GoDaddy’s hosting of pay-per-click links on the resolving website, because such links were established by the registration service, past panels have found that, in such cases, respondents are ultimately responsible for the content of their websites. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).
The Panel finds there is ample evidence of the requisite bad faith registration and use of the disputed domain name. As noted above, the disputed domain name was used in connection with a parked page containing pay-per-click advertising links. At least one such link refers to a competitor of Complainant. Under such circumstances, and given the Panel’s finding that the domain name is confusingly similar to Complainant’s CITIGROUP mark, the Panel concludes that, by using the disputed domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s online location or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site or of a product or service on such site or location, within the meaning of paragraph 4(b)(iv) of the Policy.
Under the facts of this case, including the level of recognition enjoyed by the CITIGROUP mark, Respondent’s current passive holding of the disputed domain name is further grounds to find the requisite bad faith. See, e.g., Google Inc. v. Jennifer Burns, FA 726096 (Nat. Arb. Forum Aug. 16, 2006) (“Respondent’s continued retention and non-use of each of the disputed domain names for approximately 12 months (as of the date of the complaint), and particularly in light of Complainant’s rights in the mark GOOGLE amounts to passive holding which here also reflects bad faith use. Various panels, including this one, have held that passive holding, coupled with a respondent’s knowledge of trademark rights of a complainant in the name being so held … can amount to bad faith use…”).
Respondent’s knowledge of the CITIGROUP mark is clearly established in this case. Not only may the Panel infer such knowledge from the fact that the CITIGROUP mark is well established, but Respondent was put on actual notice of the existence of such mark as a result of the Trademark Clearinghouse procedures.
Respondent’s failure to respond to any of Complainant’s “cease and desist” letters is further evidence of bad faith registration and use. See, e.g., Kellogg North America Co. v. Frank Unger, FA1613262 (Nat. Arb. Forum June 1, 2015) (“The Respondent has ignored Complainant’s attempts to resolve the dispute outside of this administrative proceeding. Failure to respond to a cease and desist letter indicates bad faith registration and use of a domain name.”).
Finally, the Panel rejects Respondent’s suggestion that Complainant was under some obligation to register the disputed domain name. See, e.g., BzzAgent, Inc. v. bzzaget.com, D2010-1187 (WIPO Sept. 17, 2010) (”The onus is on the respondent to make the appropriate inquiries to ensure that the registration of the domain name does not infringe or violate third-party rights.”).
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.holdings> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Date: December 15, 2015
[1] Complainant, in its Additional Submission, first contends that Respondent’s Response should not be considered by the Panel because it does not comport with UDRP rules and the Forum’s Supplemental Rules. While such contention has merit, the Panel, exercising its general powers under UDRP Rule 10, determines to review and consider the arguments set forth in the Response.
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