Citadel LLC and its related entity KCG IP Holdings LLC v Branislav Sekulic
Claim Number: FA1704001725260
Complainant is Citadel LLC and its related entity KCG IP Holdings LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois United States. Respondent is Branislav Sekulic (“Respondent”), Serbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelglobalinvestments.net>, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2017; the Forum received payment on April 6, 2017.
On April 5, 2017, TUCOWS, INC. confirmed by e-mail to the Forum that the <citadelglobalinvestments.net> 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 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@citadelglobalinvestments.net. Also on April 6, 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 May 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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
Complainant registered the CITADEL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,213,943, registered Feb. 27, 2007). Respondent’s <citadelglobalinvestments.net> is confusingly similar to the CITADEL mark because it fully incorporates the mark and adds the descriptive or generic terms “global” and “investments,” along with the generic top-level domain (“gTLD”) “.net”.
Respondent has no rights or legitimate interests in <citadelglobalinvestments.net>. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use its CITADEL mark in any respect. Respondent also has not used the disputed domain in connection with any bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent uses the <citadelglobalinvestments.net> to pass itself off as Complainant. Further, Respondent, by attempting to pass off as Complainant, offers services that directly compete with Complainant.
Respondent has registered and used the <citadelglobalinvestments.net> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by using a confusingly similar domain name to purport to offer similar and competing financial services as Complainant. Respondent also had actual knowledge of Complainant’s rights in the CITADEL mark when it registered the disputed domain name as demonstrated by Complainant’s longstanding notoriety and Respondent prominently displaying Complainant’s design and mark on the resolving webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <citadelglobalinvestments.net> domain name.
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 operates a financial company that offers investment management services, along with related advice in the field. Complainant first used its mark in connection with these services on August 31, 1994. Complainant claims rights in the CITADEL mark based upon registration with the USPTO (e.g., Reg. No. 3,213,943, registered Feb. 27, 2007). Registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See 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.). Therefore, the Panel finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <citadelglobalinvestments.net> is confusingly similar as it fully incorporates Complainant’s mark and adds descriptive or generic terms and the gTLD “.net.” Similar changes have not sufficiently distinguished domain names from marks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Similarly, Panels have held that adding the gTLD “.net” is irrelevant to an analysis of confusing similarity. Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent’s disputed domain name incorporates the CITADEL mark in its entirety and adds the descriptive or generic terms “global” and “investments,” along with the gTLD “.net.” Therefore, the Panel agrees that Respondent has not included elements in the disputed domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 contends that Respondent has no rights or legitimate interests in the <citadelglobalinvestments.net> domain name. When a respondent fails to respond, relevant information for the purposes of Policy ¶ 4(c)(ii) includes the WHOIS and any other assertions by the complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS information of record identifies “Branislav Sekulic” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever legitimately used the CITADEL mark. Panels may use these assertions as evidence of lacking rights or 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by <citadelglobalinvestments.net> under Policy ¶ 4(c)(ii).
Complainant argues that Respondent doesn’t use the disputed domain name for any bona fide offering of goods or services because it attempts to pass itself off as Complainant. Passing off is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Complainant alleges that the disputed domain name resolves to a webpage mimicking Complainant’s designs and marks, presumably for commercial benefit. The Panel concludes that Respondent’s use of the disputed domain does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant similarly argues that Respondent uses the <citadelglobalinvestments.net> domain name to offer services that directly compete with Complainant. Using a confusingly similar domain name that offers competing services does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Complainant alleges that the disputed domain name resolves in a webpage that resembles Complainant’s webpage and offers services in the same financial industry. The Panel finds this argument persuasive and finds that Respondent does not make any bona fide offering of goods or services of the disputed domain name under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <citadelglobalinvestments.net> domain name in bad faith by using a confusingly similar domain name and offering competing services, thus disrupting Complainant’s business. A complainant may use these assertions in attempts to evince bad faith under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use 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 October 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.”). Complainant alleges that Respondent, by using a confusingly similar domain, attempts to commercially benefit by offering competing services under the guise of Complainant, thus diminishing Complainant’s consumer base. The Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark and uses that as evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii) and (iv).
Complainant claims that Respondent had actual or constructive knowledge of Complainant’s mark. However, the Panel may disregard arguments of bad faith based on constructive notice as 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 finds that actual knowledge adequately evinces 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). Complainant contends that Respondent must have had actual knowledge of the CITADEL mark as demonstrated by Complainant’s longstanding notoriety and Respondent prominently displaying Complainant’s design and mark on the resolving webpage. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <citadelglobalinvestments.net> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 8, 2017
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