Citigroup Inc. v. wallace Shaw / shaw realty
Claim Number: FA1612001707541
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is wallace Shaw / shaw realty (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citibank.host>, registered with NameCheap, 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.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2016; the Forum received payment on December 14, 2016«DateHardCopy».
On December 15, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <citibank.host> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2017 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@citibank.host. Also on December 15, 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.
A timely Response was received and determined to be complete on December 21, 2016.
On December 15, 2016 the FORUM issued a letter to Complainant requesting that it correct a deficiency in relation to the Respondent’s identity and contact information. On the same day Complainant filed an amended Complaint.
On December 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan 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 is a U.S. corporation with its global headquarters in New York, New York.
Complainant has rights in the trade mark CITIBANK. The mark is registered with the USPTO under Registration Nos. 3622937, 2636299, 1048704, 1016844 and 691, 815 (the earliest registration of which dates from January 19, 1960). The mark has been in use in the U.S. since at least as early as 1959. The CITIBANK mark is also extensively registered around the world.
Complainant by itself or by its wholly-owned subsidiary, Citibank N.A., owns numerous domain names including <citibank.com>, <citibank.net>, <citibank.org>, <citibank.info>, <citibank.biz>, <citibank.us>, <citibank.trading>, <citibank.accountant>, and <citibank.property>. Some of these domain names have been used in relation to Complainant’s business since as early as 1998.
Complainant has promoted the CITIBANK trade marks globally. In 2016, BrandFinance Global Banking 500 (100) rated CITIBANK #8 on its list of the best global banking brands.
Complainant has developed extremely valuable goodwill and an outstanding reputation in the CITIBANK marks and the CITIBANK domain names. The CITIBANK marks are famous and indications of high quality and origin associated exclusively with Complainant.
The disputed domain name, registered on February 15, 2016, is identical to the CITIBANK mark as it solely adds the generic top-level domain, “.host” to the mark. The disputed domain name had previously resolved to parking pages containing sponsored pay-per-click links to third party content, including for financial planning services that are directly competitive with the goods and services offered by Complainant. More recently, the disputed domain name has not resolved to any active website.
On July 8, 2016, Complainant’s counsel sent a cease and desist letter to Respondent, and requested the transfer of the registration for the disputed domain name. A second letter was sent on July 21, 2016. No responses were received.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not a licensee of Complainant nor authorized to use Complainant’s CITIBANK mark or to register domain names incorporating the CITIBANK mark. The disputed domain name was registered long after Complainant had registered its CITIBANK marks and had established extensive goodwill. The disputed domain name does not reflect Respondent’s common name. Respondent’s website never provided any substantive content of its own.
Respondent registered and is using the disputed domain name in bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CITIBANK marks, and having used the disputed domain name in connection with parked pages containing sponsored pay-per-click links to third party content. Only after receipt of Complainant’s two cease and desist letters was the disputed domain name transitioned to a passive holding. Respondent therefore registered the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to its online location, by creating a likelihood of confusion with Complainant’s CITIBANK marks.
Respondent appears to own a portfolio of over 40 other domain names, many of which contain third party trade marks, including <caillacdiscountparts.com>, <harleydavidsondiscountedparts.com> and <mercedesbenzdiscountparts.com>. Respondent therefore registered the disputed domain name in order to prevent Complainant from reflecting the mark in the “.host” new gTLD, as part of a pattern of registering domain names incorporating trade marks.
Respondent has no possible argument that he was unaware of the CITIBANK brand in view of how well established it is. In the context of the high value of the CITIBANK brand, the passive holding of the disputed domain name evidences bad faith registration and use.
Respondent’s failure to respond to Complainant’s cease and desist letters further evidences his bad faith registration and use. His deletion or removal of the content of his website after receipt of the said letters further evidences bad faith.
B. Respondent
Respondent filed a Response on December 21, 2016. He claimed to know nothing about the disputed domain name and denied ownership thereof and any connection with it. He said that he has suspicions that someone had used his identity to create it. Respondent said that the disputed domain name “can be removed, deleted, ended” as he owned no rights to the disputed domain name.
(a) The disputed domain name is confusingly similar to the trade mark CITIBANK in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been 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.
Strangely, notwithstanding the aforesaid, the Panel notes that in the Response, Respondent requested that the remedy sought by Complainant be denied. In the circumstances, the Panel decides that a decision on the merits is still required and proceeds to conduct an analysis of the case under the elements of the Policy.
Complainant has established it has rights in the CITIBANK mark. This is undisputed. The only difference between the disputed domain name and Complainant’s mark lies in the gTLD “.host”. The gTLD is a technical requirement of domain names and does not have any impact on the issue of whether the disputed domain name is identical or confusingly similar to Complainant’s CITIBANK mark. The Panel therefore finds that the disputed domain name is identical to Complainant’s CITIBANK mark.
Paragraph 4(a)(i) of the Policy has therefore been established.
The Panel finds that a prima facie case has indeed been established by Complainant. Having done so, the burden shifts to Respondent to establish, with evidence, that he has rights or legitimate interests in respect of the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (FORUM, August 18, 2006) and AOL LLC v. Gerberg, FA 780200 (FORUM September 25, 2006).
In this case, Respondent has disclaimed any rights to the disputed domain name. In the circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(ii) of the Policy has therefore been established.
Paragraph 4(b) of the Policy provides that the following circumstances, if found to be present, “shall be evidence of the registration and the use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel determines that Respondent who is the registrar-confirmed registrant of the disputed domain name, is the proper respondent notwithstanding Respondent’s claim of identity theft. The Panel has no means of ascertaining if Respondent’s allegation is true or not. On the other hand, paragraph 1 of the Rules states that a respondent is “the holder of a domain-name registration against which a complaint is initiated”. See Banco Bradesco S/A v. Gisele Moura Leite, WIPO Case No. D2014-0414.
The Panel agrees that Respondent’s registration of the disputed domain name incorporating the famous CITIBANK mark and numerous other domain names which incorporate famous marks of third parties reflect a pattern of conduct which shows bad faith on Respondent’s part. The circumstances strongly suggest that Respondent’s registration of the disputed domain name must have been to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name”. In view of the widespread fame and long and extensive use of the CITIBANK marks, it would not at all be a plausible argument that Respondent had no knowledge of Complainant and its rights in the CITIBANK mark. The passive holding of the disputed domain name does not prevent the Panel from making a finding that the disputed domain name was registered and is being used in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel held that the following “particular circumstances of [the] case” led to a finding of bad faith registration and use notwithstanding passive holding of the domain name:
(i) The complainant’s trade mark had a strong reputation and was widely known,
(ii) The respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name,
(iii) The respondent had taken active steps to conceal its true identity,
(iv) It was not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trademark law.
The Panel is of the view that the above-mentioned circumstances are present in this case and therefore finds that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a)(iii) of the Policy has therefore been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citibank.host> domain name be TRANSFERRED from Respondent to Complainant
Francine Siew Ling Tan, Panelist
Dated: December 29, 2016
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