Citadel LLC and its related entity KCG IP Holdings LLC v. Simo Nikolov Simeonov
Claim Number: FA1607001683253
Complainant is Citadel LLC and its related entity KCG IP Holdings LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is Simo Nikolov Simeonov (“Respondent”), Bulgaria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadel-capital.com>, registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2016; the Forum received payment on July 12, 2016.
On July 12, 2016, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <citadel-capital.com> domain name is registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA 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 July 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@citadel-capital.com. Also on July 12, 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 August 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Complainant is engaged in the business of providing liquidity and trade execution to retail and institutional clients, and it is a leader in investment management technology. Attached as Annex 4 are printouts of Complainant’s official websites at <citadel.com>, <citadelsecurities.com> and <citadeltechnology.com>. Complainant has also endeavored to protect the CITADEL mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,213,943, registered Feb. 27, 2007). See Compl., at Attached Annex 3. Respondent’s <citadel-capital.com> incorporates the CITADEL mark fully, adds a hyphen, the generic/descriptive word “capital,” and the generic top-level domain (“gTLD”) “.com” and is therefore confusingly similar to the mark.
2. Respondent has no rights or legitimate interests in or to the disputed <citadel-capital.com> domain. Respondent has never been commonly known by the disputed domain name. Respondent has caused the disputed domain to resolve to a website which purports to offer financial and investment-related services that compete with Complainant, which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
3. While Respondent’s use of the disputed domain coincides with the services in the financial industry that Complainant offers, and has resolved to such competing use since the domain’s inception, Respondent must be considered to have registered and used the disputed domain in bad faith per Policy ¶¶ 4(b)(iii) and (iv). Lastly, Respondent registered and used the disputed domain name with actual knowledge.
B. Respondent
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <citadel-capital.com> domain name is confusingly similar to Complainant’s CITADEL mark.
2. Respondent does not have any rights or legitimate interests in the <citadel-capital.com> domain name.
3. Respondent registered or used the <citadel-capital.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 (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 is engaged in the business of providing liquidity and trade execution to retail and institutional clients, and it is a leader in investment management technology. Attached to the Complaint as “Annex 4” are printouts of Complainant’s official websites at <citadel.com>, <citadelsecurities.com> and <citadeltechnology.com>. Complainant claims it has registered the CITADEL mark with the likes of the USPTO (e.g., Reg. No. 3,213,943, registered Feb. 27, 2007). See Compl., at Attached Annex 3. Panels have found rights in a mark even where a respondent resides or operates in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Therefore, the Panel agrees that Complainant has satisfied the rights requirement established by Policy ¶ 4(a)(i).
Secondly, Complainant argues that Respondent’s <citadel-capital.com> incorporates the CITADEL mark fully, adds a hyphen, the generic/descriptive word “capital,” and the gTLD “.com” and is therefore confusingly similar to the mark. Hyphens are irrelevant in a Policy ¶ 4(a)(i) analysis. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). Also, a Forum panel has recently made the determination for Complainant that the addition of a financial term and a gTLD does not distinguish a disputed domain that fully incorporates the CITADEL mark. See Citadel LLC and its related entity, KCG IP Holdings LLC v. Joel Lespinasse / Radius Group, FA1579141 (Forum Oct. 15, 2014) (finding <citadelfunding.net> confusingly similar to the CITADEL mark where it fully included the CITADEL mark with the addition of the generic term funding and gTLD <.net>). Therefore, this Panel agrees that the alterations Respondent has made to the CITADEL mark to create <citadel-capital.com> cannot overcome a finding of confusing similarity 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 Respondent has no rights or legitimate interests in or to the disputed <citadel-capital.com> domain. Complainant contends that Respondent has never been commonly known by the disputed domain name. While the publicly-available WHOIS information lists “Simo Nikolov Simeonov” as registrant, and Respondent has not submitted a Response to rebut Complainant’s contentions, the Panel agrees with Complainant and finds Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant makes the following contentions about Respondent’s use of the disputed domain:
Respondent uses the Offending Domain to resolve to a website for ‘Citadel Capital Management.’ According to the website, ‘Citadel Capital Management’ provides investment and consulting services including trading on U.S. and European financial markets and investment brokerage. Respondent has placed what appears to be a fake stock and commodities market feed throughout the website at the Offending Domain. On the ‘License And Awards’ section of the website, there are no licenses listed, and none of websites for the ‘awards’ listed show any mention of ‘Citadel Capital Management.” Disturbingly, in the ‘Become a Client’ section of the website, potential ‘clients’ are instructed to ‘1. Upload Identity Card 2. Sign a Contract 3. Deposit.’
Compl., at p. 4. See also Complaint, at attached annex 5 for printouts evidencing Respondent’s use. Panels have agreed that respondents which cause disputed domains to resolve to websites which purport to offer competing goods or services do not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, this Panel finds Respondent’s use of the <citadel-capital.com> domain name does not amount to any bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent’s use of the disputed domain coincides with the services in the financial industry that Complainant offers, and has resolved to such competing use since the domain’s inception (see Compl., at Attached Annex 5)—so Respondent must be considered to have registered and used the disputed domain in bad faith per Policy ¶¶ 4(b)(iii) and (iv). Panels have agreed that such competing use amounts to bad faith under both prongs. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Therefore, the Panel agrees that Respondent has registered and used the disputed domain name in bad faith pursuant to both Policy ¶¶ 4(b)(iii) and (iv).
Lastly, Complainant contends that in light of the fame and notoriety of Complainant's CITADEL mark, Respondent’s efforts to operate in the financial services industry, and the incorporation entirely of the CITADEL mark, it is inconceivable that Respondent could have registered the <citadel-capital.com> domain name without actual knowledge of Complainant's rights in the mark. Complainant asks that the Panel find in accordance with Citadel Investment Group L.L.C. and its related entity, KCG IP Holdings, LLC v. Anthony N.Georgiuo a/k/a Anthony Georgiou, FA1301001482483 (Forum Mar. 4, 2013) (“[D]ue to the fame of Complainant’s [CITADEL] mark, Respondent had actual knowledge of the mark and Complainant’s rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).”). Because of the similar fact pattern, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, thus constituting adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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 <citadel-capital.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 22, 2016
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