Citizens Financial Group, Inc. v. shilei
Claim Number: FA1702001717828
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by Robert M. O’Connell, Jr. of Fish & Richardson P.C., Massachusetts, U.S.A. Respondent is shilei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citizensbaank.com>, <citizensbbank.com>, <citizensbannk.com>, <citizenssone.com>, <citizenonepersonalloans.com>, <citezensonepersonalloans.com>, <citizensonepersoalloans.com>, <citizensonepersonallloans.com>, <citizensonepersonaloans.com>, <citzensonepersonalloans.com>, <citizensbankpersonnalloans.com>, <citizensbankpesonalloans.com>, <citezensbankpersonalloans.com>, <citizensbakpersonalloans.com>, <citizensbankpersonallloans.com>, registered with 22net, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2017; the Forum received payment on February 17, 2017.
On Feb 19, 2017, 22net, Inc. confirmed by e-mail to the Forum that the <citizensbaank.com>, <citizensbbank.com>, <citizensbannk.com>, <citizenssone.com>, <citizenonepersonalloans.com>, <citezensonepersonalloans.com>, <citizensonepersoalloans.com>, <citizensonepersonallloans.com>, <citizensonepersonaloans.com>, <citzensonepersonalloans.com>, <citizensbankpersonnalloans.com>, <citizensbankpesonalloans.com>, <citezensbankpersonalloans.com>, <citizensbakpersonalloans.com>, and <citizensbankpersonallloans.com> domain names are registered with 22net, Inc. and that Respondent is the current registrant of the names. 22net, Inc. has verified that Respondent is bound by the 22net, 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 March 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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@citizensbaank.com, postmaster@citizensbbank.com, postmaster@citizensbannk.com, postmaster@citizenssone.com, postmaster@citizenonepersonalloans.com, postmaster@citezensonepersonalloans.com, postmaster@citizensonepersoalloans.com, postmaster@citizensonepersonallloans.com, postmaster@citizensonepersonaloans.com, postmaster@citzensonepersonalloans.com, postmaster@citizensbankpersonnalloans.com, postmaster@citizensbankpesonalloans.com, postmaster@citezensbankpersonalloans.com, postmaster@citizensbakpersonalloans.com, and postmaster@citizensbankpersonallloans.com. Also on March 9, 2017, 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 11, 2017, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant registered its CITIZENS BANK, CITIZENS ONE, and CITIZENS ONE PERSONAL LOANS marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,668,486, Registered Dec. 31, 2002; Reg. No. 4,773,637, Registered July 14 , 2015; Reg. No. 5,041,741, Registered Sept. 13, 2016), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 5. Respondent’s domain names are confusingly similar to Complainant’s marks because all are simple misspellings of Complainant’s marks.
2. Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its CITIZENS BANK, CITIZENS ONE, and CITIZENS ONE PERSONAL LOANS marks in any fashion, and Respondent is not commonly known by the disputed domain names. See Compl., at Attached Ex. 2 (WHOIS information). Respondent is using the resolving websites of the disputed domain names to display competing hyperlinks and benefit from click-through advertisements. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
3. Respondent has registered and is using the <citizensbaank.com>, <citizensbbank.com>, <citizensbannk.com>, <citizenssone.com>, <citizenonepersonalloans.com>, <citezensonepersonalloans.com>, <citizensonepersoalloans.com>, <citizensonepersonallloans.com>, <citizensonepersonaloans.com>, <citzensonepersonalloans.com>, <citizensbankpersonnalloans.com>, <citizensbankpesonalloans.com>, <citezensbankpersonalloans.com>, <citizensbakpersonalloans.com>, and <citizensbankpersonallloans.com> names in bad faith. While fifteen domain names are at issue here, Policy ¶ 4(b)(ii) bad faith is imputed. Next, Respondent attempts to disrupt the business of Complainant—under Policy ¶ 4(b)(iii)—by including competitors’ links on the resolving webpage. See id. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the CITIZENS BANK, CITIZENS ONE, and CITIZENS ONE PERSONAL LOANS marks by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant under Policy ¶ 4(b)(iv). Respondent also registered and used the domain names with at least constructive knowledge of Complainant’s marks and its rights in the marks. Finally, Respondent’s misspelling of Complainant’s marks amounts to typosquatting and is independent evidence of bad faith in the registration and use of the domain name under Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent did not submit a Response.
PANEL NOTE
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). After reviewing the applicable rules regarding the proceedings of the UDRP and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the 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 <citizensbaank.com>, <citizensbbank.com>, <citizensbannk.com>, <citizenssone.com>, <citizenonepersonalloans.com>, <citezensonepersonalloans.com>, <citizensonepersoalloans.com>, <citizensonepersonallloans.com>, <citizensonepersonaloans.com>, <citzensonepersonalloans.com>, <citizensbankpersonnalloans.com>, <citizensbankpesonalloans.com>, <citezensbankpersonalloans.com>, <citizensbakpersonalloans.com>, <citizensbankpersonallloans.com> domain names are confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or legitimate interests in the <citizensbaank.com>, <citizensbbank.com>, <citizensbannk.com>, <citizenssone.com>, <citizenonepersonalloans.com>, <citezensonepersonalloans.com>, <citizensonepersoalloans.com>, <citizensonepersonallloans.com>, <citizensonepersonaloans.com>, <citzensonepersonalloans.com>, <citizensbankpersonnalloans.com>, <citizensbankpesonalloans.com>, <citezensbankpersonalloans.com>, <citizensbakpersonalloans.com>, <citizensbankpersonallloans.com> domain names.
3. Respondent registered or used the <citizensbaank.com>, <citizensbbank.com>, <citizensbannk.com>, <citizenssone.com>, <citizenonepersonalloans.com>, <citezensonepersonalloans.com>, <citizensonepersoalloans.com>, <citizensonepersonallloans.com>, <citizensonepersonaloans.com>, <citzensonepersonalloans.com>, <citizensbankpersonnalloans.com>, <citizensbankpesonalloans.com>, <citezensbankpersonalloans.com>, <citizensbakpersonalloans.com>, <citizensbankpersonallloans.com> domain names 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 contends it registered its CITIZENS BANK, CITIZENS ONE, and CITIZENS ONE PERSONAL LOANS marks with the USPTO (Reg. 2,668,486, Registered December 31, 2002, Reg. 4,773,637, Registered July 14 , 2015, Reg. 5,041,741, Registered September 13, 2016), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 5. A USPTO registration confers rights in a mark. T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the CITIZENS BANK, CITIZENS ONE, and CITIZENS ONE PERSONAL LOANS marks under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s<citizensbaank.com>, <citizensbbank.com>, <citizensbannk.com>, <citizenssone.com>, <citizenonepersonalloans.com>, <citezensonepersonalloans.com>, <citizensonepersoalloans.com>, <citizensonepersonallloans.com>, <citizensonepersonaloans.com>, <citzensonepersonalloans.com>, <citizensbankpersonnalloans.com>, <citizensbankpesonalloans.com>, <citezensbankpersonalloans.com>, <citizensbakpersonalloans.com>, <citizensbankpersonallloans.com> are confusingly similar to Complainant’s mark because all are simple misspellings of Complainant’s marks. The Panel agrees that the domain names differ from the marks generally by misspelling “citizens,” or “bank,” or “loans,” or “personal,” eliminating the space, and appending the “.com” gTLD. Such alterations have not been considered distinguishing under Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names); see also Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”) Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). As such, the Panel holds that confusingly similar to Complainant’s CITIZENS BANK, CITIZENS ONE, and CITIZENS ONE PERSONAL LOANS 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its CITIZENS BANK, CITIZENS ONE, and CITIZENS ONE PERSONAL LOANS mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel notes that the disputed domain names’ WHOIS information lists “shilei” as the registrant. See Compl., at Attached Ex. 2. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain names.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent is using the resolving websites of the disputed domain names to display competing hyperlinks and benefit from click-through advertisements. Attempts to compete with a complainant, presumably for commercial gain, may not evince rights or legitimate interests. See CheapCaribbean.com,Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”) Here, Complainant provided evidence of Respondent’s websites showing the competing hyperlinks. Compl. at Attached Ex. 8. Accordingly, the Panel agrees that this evidence supports a finding that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Complainant alleges that Respondent engaged in typosquatting. Typosquatting shows a lack of rights or legitimate interests under Policy ¶ 4(a)(ii)). Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”). The Panel notes that the disputed domain names capitalize on Internet users’ typographical errors by including only the marks and the addition or deletion of letters. Therefore, the Panel holds that Respondent engaged in typosquatting and lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in a pattern of bad faith registration because Respondent owns multiple disputed domain names that are all misspellings of Complainant’s marks appended with the gTLD “.com”. Registration of multiple infringing domain names is an indication of bad faith under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). The Panel notes that fifteen domain names that incorporate Complainant’s mark are at issue in this dispute. Therefore, the Panel finds that Respondent has engaged in bad faith behavior under Policy ¶ 4(b)(ii).
Further, Complainant asserts that Respondent is disrupting its business by attempting to divert potential customers away from Complainant to third-party websites linked on the website. A Respondent disrupts a Complainant’s business and therefore shows bad faith under Policy ¶ 4(b)(iii) when the disputed domain name’s resolving website displays links to Complainant’s competitors. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). The Panel notes that the disputed domain names’ resolving websites display competing hyperlinks such as “Online Banking Account,” “Credit Card Payment Services,” and “Bill Pay.” Compl., at Attached Ex. 8. As such, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the CITIZENS BANK, CITIZENS ONE, and CITIZENS ONE PERSONAL LOANS marks through click-through advertising fees. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends that the disputed domain names create confusion as to the source, sponsorship, affiliation, or endorsement of its website for the purpose of attracting Internet traffic and commercial benefit through click-through ads. See Compl., at Attached Ex. 8. As such, the Panel concludes that Respondent created a likelihood of confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that the Panel may find at least constructive notice based on trademark registration. Complainant first adopted and first used the CITIZENS BANK mark over 40 years ago, the CITIZENS ONE mark on January 19, 2015 and the CITIZENS ONE PERSONAL LOANS mark on February 29, 2016. The Panel notes that all of Respondent’s disputed domain names were registered after all of the CITIZEN marks had been trademarked. Compl. at Attached Ex. 2,5. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the disputed domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Lastly, Complainant argues that Respondent engaged in typosquatting and therefore engaged in bad faith behavior pursuant to Policy ¶ 4(a)(iii). Registering a domain name that capitalizes on the typographical errors of Internet users is considered typosquatting and is evidence of bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel notes that the disputed domain names capitalize on Internet users typographical errors by including only the marks and the addition or deletion of letters. Therefore the Panel holds that Respondent engaged in typosquatting and acted in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citizensbaank.com>, <citizensbbank.com>, <citizensbannk.com>, <citizenssone.com>, <citizenonepersonalloans.com>, <citezensonepersonalloans.com>, <citizensonepersoalloans.com>, <citizensonepersonallloans.com>, <citizensonepersonaloans.com>, <citzensonepersonalloans.com>, <citizensbankpersonnalloans.com>, <citizensbankpesonalloans.com>, <citezensbankpersonalloans.com>, <citizensbakpersonalloans.com>, and <citizensbankpersonallloans.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 24, 2017
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