DECISION

 

Citizens Financial Group, Inc. v. Shi Lei Linping

Claim Number: FA1811001815027

 

PARTIES

Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by Robert M. O’Connell, Jr. of Fish & Richardson P.C., Massachusetts, USA.  Respondent is shi lei linping (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <citizensbankpersonaloans.com>, registered with Namesilo, Llc, and <citizensbankpersonelloans.com>, registered with Uniregistrar Corp.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 5, 2018; the Forum received payment on November 5, 2018.

 

On November 5, 2018, both Namesilo, Llc and Uniregistrar Corp confirmed by e-mail to the Forum that the <citizensbankpersonaloans.com> and

 <citizensbankpersonelloans.com> domain names are registered with Namesilo, Llc and Uniregistrar Corp, respectively, and that Respondent is the current registrant of the names.  Namesilo, Llc and Uniregistrar Corp have verified that Respondent is bound by the Namesilo, Llc and Uniregistrar Corp registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2018 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@citizensbankpersonaloans.com and postmaster@citizensbankpersonelloans.com.  Also on November 16, 2018, 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 December 10, 2018, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant is one of the oldest and largest financial services firms in the United States, offering retail and commercial banking products and services to individuals, small businesses, middle-market companies, large corporations and institutions, with approximately 1,200 branches in eleven states. Complainant has rights in the CITIZENS BANK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,668,486, registered Dec. 31, 2002). See Amend. Compl. Ex. 5. Respondent’s <citizensbankpersonaloans.com> and <citizensbankpersonelloans.com> domain names are identical or confusingly similar to Complainant’s mark as they each incorporate Complainant’s mark in its entirety and add a misspelled version of the descriptive term “personal loans” and the most common generic top-level domain (“gTLD”) “.com.”

 

2.    Respondent has no rights or legitimate interests in the <citizensbankpersonaloans.com> and <citizensbankpersonelloans.com> domain names. Respondent is not commonly known by the disputed domain names, as the WHOIS information lists the registrant as “Shi Lei.” See Amend. Compl. Ex. 9. Further, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses both domain names to redirect users to competing pay-per-click websites. See Amend. Compl. Ex. 8.

 

3.    Respondent registered and uses the <citizensbankpersonaloans.com> and <citizensbankpersonelloans.com> domain names in bad faith. Respondent has engaged in a pattern of bad faith registration of domain names incorporating famous registered trademarks. See Amend. Compl. pg. 10. Further, Respondent’s use of the domain names disrupts Complainant’s business by redirecting users to a commercially competitive click-through website. See Amend. Compl. Ex. 8. Additionally, Respondent engages in typosquatting by creating slight misspellings of terms in the domain name. Finally, Respondent was on notice of Complainant’s rights in the CITIZENS BANK mark when it registered the infringing domain names, as Complainant first used the mark in commerce as early as 1976.

 

B.   Respondent

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <citizensbankpersonaloans.com> and <citizensbankpersonelloans.com> domain names are confusingly similar to Complainant’s CITIZENS BANK mark.

2.    Respondent does not have any rights or legitimate interests in the <citizensbankpersonaloans.com> and <citizensbankpersonelloans.com> domain names.

3.    Respondent registered or used the <citizensbankpersonaloans.com> and <citizensbankpersonelloans.com> domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the CITIZENS BANK mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,668,486, registered Dec. 31, 2002). See Amend. Compl. Ex. 5. 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, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . 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, the Panel finds that Complainant has established rights in the CITIZENS BANK mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <citizensbankpersonaloans.com> and <citizensbankpersonelloans.com> domain names are identical or confusingly similar to Complainant’s mark as they each incorporate Complainant’s mark in its entirety and add a misspelled version of the descriptive term “personal loans” and “.com,” the most common gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel therefore finds that the infringing domain names are confusingly similar to the CITIZENS BANK mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant contends that Respondent has no rights or legitimate interests in the <citizensbankpersonaloans.com> and <citizensbankpersonelloans.com> domain names.  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 “Shi Lei” as the registrant.  See Amend. Compl. Ex. 9. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the CITIZENS BANK 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, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the at-issue domain names under Policy ¶ 4(c)(ii).

 

Next, Complainant claims that Respondent uses both domain names to redirect users to competing pay-per-click websites. Using a domain name to offer links to services in direct competition with a complainant generally does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant.  The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the resolving webpages associated with the domain names, which appears to contain links such as “Credit Personal Loans” and “Bank of America Personal Loans.” See Amend. Compl. Ex. 8. Accordingly, the Panel agrees and finds that Respondent’s use of the domain name to offer competing hyperlinks fails to confer rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent has engaged in a pattern of bad faith registration of domain names incorporating famous registered trademarks. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evidence bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides ten (10) prior UDRP cases as examples of Respondent’s prior history of bad faith regarding domain name registration. See Amend. Compl. pg. 10. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith based on Respondent’s prior history of registering confusingly similar domain names.

 

Next, Complainant claims that Respondent’s use of the domain names disrupts Complainant’s business by redirecting users to a commercially competitive click-through website. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). 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).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant provides screenshots of the resolving webpages associated with the domain names, which appears to contain links such as “Credit Personal Loans” and “Bank of America Personal Loans.” See Amend. Compl. Ex. 8. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).

 

Further, Complainant avers that Respondent engages in typosquatting by creating slight misspellings of terms in the domain name. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, Complainant claims that Respondent misspells the descriptive terms it added to Complainant’s mark when forming the domain names. Accordingly, the Panel finds that Respondent’s changes of the added terms the domain name further demonstrates Respondent’s bad faith.

 

Finally, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s CITIZENS BANK mark at the time of registering the infringing domain names. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). 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 does adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Complainant first used the mark in commerce as early as 1976, thus Respondent knew of Complainant’s rights in the mark at the time of registration. 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).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <citizensbankpersonaloans.com> and <citizensbankpersonelloans.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  December 20, 2018