Citigroup Inc. v. Amjad Zoabi / United networks ltd
Claim Number: FA1709001747368
Complainant is Citigroup Inc. (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is Amjad Zoabi / United networks ltd (“Respondent”), Isreal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi24.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 1, 2017; the Forum received payment on September 1, 2017.
On September 5, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citi24.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@citi24.com. Also on September 7, 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 September 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 an American multinational banking and financial services corporation with headquarters in New York, New York, and was first founded as City Bank of New York in 1812. In 2016, Complainant was the 13th largest bank holding company in the world as measured by assets, and the 7th largest as measured by market capitalization.
2. Complainant registered the CITI mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,181,467, registered Dec. 8, 1981). Respondent’s <citi24.com>[1] domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the CITI mark and appends the number “24” along with the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <citi24.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the CITI mark.
4. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to prominently display the CITI mark and design, along with the font and colors that mirror Complainant’s branding. Respondent does this to directly compete with Complainant’s services.
5. Respondent registered and uses the <citi24.com> domain name in bad faith. Respondent offers competing services on a website that prominently displays the CITI mark and uses font and colors that mirror Complainant’s branding. Finally, Respondent must have known about Complainant’s marks as Complainant is one of the world’s largest bank holding companies and owns one of the world’s most valuable brands.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CITI mark. Respondent’s domain name is confusingly similar to Complainant’s CITI mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <citi24.com> domain name and that Respondent registered and uses the 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 registered the CITI mark with the USPTO (e.g. Reg. No. 1,181,467, registered Dec. 8, 1981). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, Complainant has established rights in the CITI mark.
Complainant next argues that Respondent’s <citi24.com> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the CITI mark and appends the number “24” along with the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (holding the <pandora1.com> domain name confusingly similar to the PANDORA trademark because the only difference between the two was the addition of the numeral “1”); see also 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). The Panel therefore finds that the <citi24.com> domain name is confusingly similar to the CITI mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <citi24.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <citi24.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a 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 identifies “Amjad Zoabi / United networks ltd” as the registrant. The record contains no evidence that Respondent has ever been legitimately known by the CITI mark. Moreover, Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the <citi24.com> domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. In light of Respondent’s failure to refute these assertions, the record demonstrates Respondent’s lack of rights or legitimate interests in the domain name. 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). Accordingly, the Panel agrees that Respondent is not commonly known by the <citi24.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <citi24.com> domain name to pass off as Complainant and offer services in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that appears to be that of a complainant’s that directly competes with complainant fails to make a bona fide offering of goods or services. 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).”). Complainant provides a screenshot of the resolving webpage, which does appear to use Complainant’s mark and design, along with the offering of financial services. Accordingly, the Panel finds that Respondent passes of as Complainant to offer competing financial services, and has thus failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent offers competing services on a website that prominently displays the CITI mark and uses font and colors that mirror Complainant’s branding. Passing off as a complainant to offer competing services can show bad faith registration and use under Policy ¶ 4(b)(iv). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As mentioned previously, Complainant provides a screenshot of the resolving webpage, which uses Complainant’s mark and design and appears to offer financial services. Accordingly, the Panel agrees and finds that Respondent passes off as Complainant to offer competing services for financial gain in bad faith under Policy ¶ 4(b)(iv).
Complainant lastly claims that Respondent had actual knowledge of Complainant’s CITI mark. Complainant contends that Respondent must have had actual knowledge of the CITI mark as Complainant is one of the world’s largest bank holding companies and owns one of the world’s most valuable brands. The Panel agrees with Complainant that Respondent undoubtedly had actual knowledge of Complainant's rights in the mark prior to registering the <citi24.com> domain name which is further 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).
The Panel finds Complainant has satisfied 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 <citi24.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 5, 2017
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