Citigroup Inc. v. huang bing
Claim Number: FA1608001691279
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is huang bing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.kim>, registered with West263 International Limited.
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 August 26, 2016; the Forum received payment on August 29, 2016.
On August 26, 2016, West263 International Limited confirmed by e-mail to the Forum that the <citi.kim> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 August 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@citi.kim. Also on August 29, 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 September 27, 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, Citigroup Inc., is a banking and financial services corporation based in New York City in operation since 1812 and was the fourteenth largest bank holding company in the world by assets and seventh largest by market capitalization in 2014. Complainant uses the CITI mark in connection with its business in the financial services industry and has rights in the mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) as well as other international trademark agencies (e.g., Reg. No. 1,181,467, registered Dec. 8, 1981). Respondent’s domain name, <citi.kim>, is identical or confusingly similar to the CITI mark as the domain name includes the entire mark and merely differs through the addition of the top-level domain (“TLD”) “.kim.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been authorized to use the CITI marks in any manner and Respondent’s domain does not reflect Respondent’s common name. Further, Respondent’s use of the domain name, to resolve to a website containing hyperlinks to an auction webpage offering the domain name for sale or to a website containing advertisements containing links to third-party content, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Respondent’s domain name has been registered and used in bad faith. Respondent originally listed the domain name for sale and offered to sell the domain name during email correspondence between the parties. Respondent has demonstrated a pattern of bad faith registrations and intends to prevent Complainant from reflecting its marks in the domain name. Respondent intends to confuse and attract internet users for commercial gain and does so in bad faith. Finally, given the global fame of Complainant’s mark it is not realistic to think that Respondent was unaware of Complainant’s mark at the time of registration.
B. Respondent:
1. Respondent has not submitted a formal Response in this proceeding.
SUPPORTED LANGUAGE REQUEST
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
1. Respondent’s <citi.kim> domain name is confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citi.kim> domain name.
3. Respondent registered or used the <citi.kim> 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 claims to have rights in the mark based on registration and use of the mark with the USPTO as well as other international trademark agencies (e.g., Reg. No. 1,181,467, registered Dec. 8, 1981). See Compl., at Attached Ex. C. Panels routinely find and this Panel finds, that a complainant has rights in mark based on registration of the mark with the USPTO and other international trademark agencies. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Complainant next claims that Respondent’s domain name, <citi.kim>, is identical or confusingly similar to the CITI mark in which Complainant claims to have rights. Respondent’s domain name appears to include the entire CITI mark and differs from the mark through the addition of the TLD “.kim.” Panels have held that the addition of a TLD is generally not sufficient to differentiate a domain name from the mark to which the term is attached. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds that Respondent’s domain name is confusingly similar to the CITI mark under 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 claims that Respondent has not been authorized to use the CITI marks in any manner and Respondent’s domain name does not reflect Respondent’s common name. WHOIS information associated with the domain name identifies Respondent as “huang bing,” which does not appear to resemble the disputed domain name. See Compl., at Attached Ex. B. Panels have held that a respondent is not commonly known by a disputed domain based on WHOIS information and a lack of authorization from a complainant. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel finds that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next contends that Respondent’s domain name has not been used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a website that appears to host multiple pictures that appear to be clickthrough advertisements. See Compl., at Attached Ex. H. Panels have held that using another’s marks for the purposes of resolving to a domain hosting unrelated advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). The Panel finds that Respondent’s use of the disputed domain name does not appear to be within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent has shown bad faith through originally listing the domain name for sale and attempting to sell the domain name during correspondence between the parties. As resolved for Complainant on December 21, 2015, Respondent’s domain appeared to list the disputed domain name for sale. See Compl., at Attached Ex. H. During email correspondence between the parties about the disputed domain name, Respondent requested 88888 RMB which is approximately $13,665.00 according to Complainant. See Compl., at Attached Ex. S. Panels have found bad faith where a respondent attempted to sell a confusingly similar disputed domain name for an amount in excess of out of pocket costs. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The Panel concludes that Respondent registered the domain name in bad faith under Policy ¶ 4(b)(i).
Complainant contends that Respondent has demonstrated a pattern of bad faith registrations and intends to prevent Complainant from reflecting its marks in the domain name. Complainant points to various domain names which identify the Respondent as the registrar including the domains, XIAOFEIYANG.CC, BBIN.LIVE, BBIN.RE, TIANJIA.XYZ, which Complainant claims reflect various third-party trademarks. See Compl., at 12. Panels have held that evidence of a respondent’s repeated infringing domain name registrations can allow for a finding of bad faith in a current proceeding. See N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)). The Panel finds Respondent’s other domain name registrations to be infringing on third-party marks, and it infers that Respondent’s current registration is in bad faith under Policy ¶ 4(c)(ii).
Complainant argues that Respondent intends to confuse and attract internet users for commercial gain and does so in bad faith. Again, Respondent’s domain name resolves to a website that appears to host multiple pictures that appear to be clickthrough advertisements. See Compl., at Attached Ex. H. Panels have found bad faith where a respondent used a confusingly similar domain name to resolve to a website hosting advertisements, even where those advertisements are unrelated to a complainant or its business. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel thus finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's CITI mark, it is inconceivable that Respondent could have registered the <citi.kim> 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, however, 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 (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 <citi.kim> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Esquire
Dated: October 10, 2016
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