Citigroup Inc. v. ICS INC
Claim Number: FA1603001667984
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thankyouciti.com>, registered with TUCOWS, INC.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2016; the Forum received payment on March 31, 2016.
On March 30, 2016, TUCOWS, INC. confirmed by e-mail to the Forum that the <thankyouciti.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 April 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2016 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@thankyouciti.com. Also on April 5, 2016, 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 April 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Policy ¶ 4(a)(i)
Complainant has rights in the CITI THANKYOU mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,956,034, registered on May 3, 2011). Respondent’s <thankyouciti.com> domain name is confusingly similar to the CITI THANKYOU mark because it switches the words of the mark, while only removing the space between them and adding the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <thankyouciti.com> domain name, as it is not authorized to use the CITI THANKYOU mark and because the available WHOIS information lists “ICS INC” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the resolving website contains pay-per-click links to both Complainant’s services as well as services of Complainant’s competitors. Further, Respondent lacks rights and legitimate interests in the <thankyouciti.com> domain name because it offers the domain name for sale.
Policy ¶ 4(a)(iii)
Respondent uses the <thankyouciti.com> domain name in bad faith because it offers the domain for sale in excess of its out-of-pocket expenses and because the resolving website features pay-per-click links to Complainant’s services and competitors of Complainant. Respondent registered the <thankyouciti.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the CITI THANKYOU mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., has rights in the CITI THANKYOU mark through its registration with the USPTO (Reg. No. 3,956,034, registered on May 3, 2011). Respondent’s <thankyouciti.com> domain name is confusingly similar to the CITI THANKYOU mark.
Respondent, ICS INC, registered the <thankyouciti.com> domain name on February 13, 2012. Respondent is not commonly known by the domain name Respondent’s resolving website contains pay-per-click links to both Complainant’s services as well as services of Complainant’s competitors. Respondent offers the domain name for sale at the prices of $3,529.00 and $1,829.00, in excess of its out-of-pocket expenses. Respondent lacks rights and legitimate interests in the <thankyouciti.com> domain name.
Respondent registered and uses the <thankyouciti.com> 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.
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(f), 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.”).
Complainant has rights in the CITI THANKYOU mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <thankyouciti.com> domain name is confusingly similar to the CITI THANKYOU mark under Policy ¶ 4(a)(i) because it switches the words of the mark. The domain also lacks a space between the words and adds the gTLD “.com.”
Respondent is not commonly known by the <thankyouciti.com> domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the CITI THANKYOU mark. The WHOIS information lists “ICS INC” as Registrant. 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).
Respondent fails to use the <thankyouciti.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), because the resolving website contains pay-per-click links to both Complainant’s services as well as services of Complainant’s competitors. 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 under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Further, Respondent lacks rights and legitimate interests in the <thankyouciti.com> domain name, because it offers the domain name for sale for more than its out-of-pocket costs. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Respondent uses the <thankyouciti.com> domain name in bad faith under Policy ¶ 4(b)(i), because it offers the domain for sale in excess of its out-of-pocket expenses. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Respondent registered and uses the <thankyouciti.com> domain name to attract Internet users for profit in bad faith under Policy ¶ 4(b)(iv), because the resolving website features pay-per-click links to Complainant’s services and competitors of Complainant. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent registered the <thankyouciti.com> domain name in bad faith, because it did so with actual knowledge of Complainant’s rights in the CITI THANKYOU mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thankyouciti.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 10, 2016
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