Citizens Financial Group, Inc. v. ZHICHAO YANG
Claim Number: FA1811001817275
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by Robert M. O'Connell of Fish & Richardson P.C., Massachusetts, USA. Respondent is ZHICHAO YANG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citizensonepersonallaons.com>, <citizensonepersonallones.com>, and <citizens1loan.com>, registered with Uniregistrar Corp.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2018; the Forum received payment on November 20, 2018.
On November 28, 2018, Uniregistrar Corp confirmed by e-mail to the Forum that the <citizensonepersonallaons.com>, <citizensonepersonallones.com>, and <citizens1loan.com> domain names are registered with Uniregistrar Corp and that Respondent is the current registrant of the names. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 November 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@citizensonepersonallaons.com, postmaster@citizensonepersonallones.com, and postmaster@citizens1loan.com. Also on November 29, 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 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The 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 ONE (e.g. Reg. No. 4,773,637, registered July 14, 2015) and CITIZENS ONE PERSONAL LOANS (e.g. Reg. No. 5,041,741, registered Sep. 13, 2016) trademarks through its registration of the trademarks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <citizensonepersonallaons.com>, <citizensonepersonallones.com>, and <citizens1loan.com> domain names are confusingly similar to Complainant’s trademark. The <citizensonepersonallaons.com> and <citizensonepersonallones.com> domain names each contain a misspelling of Complainant’s CITIZENS ONE PERSONAL LOANS trademark and adds the “.com” generic top-level domain (“gTLD”). The <citizens1loan.com> domain name replaces the word “one” with the number “1” while adding the generic term “loan” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the disputed domain names <citizensonepersonallaons.com>, <citizensonepersonallones.com>, and <citizens1loan.com>. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. 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, the domain names either direct Internet users to web pages containing pay-per-click links to services that compete with Complainant or web pages with no substantive content.
Respondent registered and uses the disputed domain names in bad faith. Respondent has been involved in at least eighty-six (86) prior UDRP cases which have resulted in the transfer of domain names to named complainants. Additionally, Respondent uses the <citizensonepersonallones.com> and <citizens1loan.com> domain names to redirect users to a parked webpage containing competing pay-per-click links. Further, Respondent fails to make an active use of the <citizensonepersonallaons.com> domain name’s resolving webpage. Moreover, Respondent has engaged in typosquatting by creating a common misspelling of Complainant’s trademark in two of the domain names. Finally, Respondent had at least constructive knowledge of Complainant’s rights in its marks at the time it registered the infringing domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of a number of U.S. trademark registrations for the word CITIZENS, in combination with the word “one”, “loan” or “personal loans”, such as:
No. 4,773,637 CITIZENS ONE (word), registered July 14, 2015 in respect of services in Intl. Class 36
No. 5,041,741 CITIZENS ONE PERSONAL LOANS (word), registered September 13, 2016 in respect of services in Intl. Class 36
No. 4,868,429 CITIZENS ONE STUDENT LOAN (word), registered December 8, 2015 in respect of services in Intl. Class 36
No. 4,864,344 CITIZENS ONE STUDENT LOANS (word), registered December 1, 2015 in respect of services in Intl. Class 36, and
No. 3,269,702 CITIZENS BANK (fig), registered July 24, 2007 in respect of services in Intl. Class 36
The Respondent registered the <citizensonepersonallaons.com> and <citizensonepersonallones.com> domain names on May 24, 2018, and the <citizens1loan.com> domain name on September 28, 2016.
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 claims rights to the CITIZENS ONE (e.g. Reg. No. 4,773,637, registered July 14, 2015) and CITIZENS ONE PERSONAL LOANS (e.g. Reg. No. 5,041,741, registered Sep. 13, 2016) trademarks through its registration of the marks with the USPTO. Registration of a trademark 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 ONE and CITIZENS ONE PERSONAL LOANS trademarks for the purposes of Policy ¶ 4(a)(i).
The Panel further finds that the <citizensonepersonallaons.com> and <citizensonepersonallones.com> domain names are confusingly similar to Complainant’s CITIZENS ONE PERSONAL LOANS trademark, as they contain a simple misspelling of the trademark, and that the <citizens1loan.com> domain name is confusingly similar to the CITIZENS ONE trademark, only replacing the word “one” with the number “1” and adding the generic term “loan”.
Similar changes in a registered trademark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (finding the <pandora1.com> domain name to be confusingly similar to Complainant’s PANDORA ONE mark due to the similarity between the word ONE and the numeral 1 in meaning and sound.).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
Complainant contends that Respondent has no rights or legitimate interests in the <citizensonepersonallaons.com>, <citizensonepersonallones.com>, and <citizens1loan.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. The WHOIS identifies “Zhichao Yang” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the CITIZENS ONE or CITIZENS ONE PERSONAL LOANS trademarks. The Panel concludes that Respondent is not commonly known by the disputed domain names as such, and that the Respondent has 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).
Next, Complainant claims that the <citizensonepersonallones.com> and <citizens1loan.com> domain names are used to redirect users to a parked webpage containing competing pay-per-click links.
Using a domain name to offer links to services in direct competition with a complainant 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 various screenshots of the resolving webpages for these two domain names, each of which contain links such as “Debt Consolidation Loan” and “Loan Banker.” See Compl. Ex. 8. Accordingly, the Panel may agree and find that Respondent’s use of the domain names 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).
Further, Complainant argues that Respondent fails to make an active use of the <citizensonepersonallaons.com> domain name’s resolving webpage. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
In this case, the Panel finds that Respondent fails to make any use of the domain name, failing to use the domain name in connection with 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).
Complainant contends that Respondent has been involved in at least eighty-six (86) prior UDRP cases which have resulted in the transfer of domain names to named complainants. 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 representative examples of these prior adverse decisions, and the Panel finds that Respondent registered the disputed domain names in bad faith based on Respondent’s prior adverse UDRP history.
Next, Complainant claims that Respondent uses the <citizensonepersonallones.com> and <citizens1loan.com> domain names to redirect users to a parked webpage containing competing pay-per-click links, such as “Debt Consolidation Loan” and “Loan Banker.” 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 argues that Respondent fails to make an active use of the <citizensonepersonallaons.com> domain name. Inactively holding a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the resolving webpage for the <citizensonepersonallaons.com> domain name, which displays the error message “This site can’t be reached.” The Panel concludes that the fact that the disputed domain name indeed refers to the complainant’s trademark, and at the same time is not in active use, demonstrates Respondent’s bad faith under the Policy.
Moreover, Complainant avers that Respondent has engaged in typosquatting by creating a common misspelling of Complainant’s CITIZENS ONE PERSONAL LOANS mark in the <citizensonepersonallaons.com> and <citizensonepersonallones.com> domain names. The Panel notes that Respondent appears to have changed the spelling of the term LOANS from the mark in both of the domain names, while leaving the remaining terms identical. Thus, the Panel finds that Respondent’s changes of Complainant’s trademark in these two domain names further demonstrates Respondent’s bad faith per 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).”).
Finally, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s trademarks at the time of registering the infringing domain names. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain names and finds 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”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citizensonepersonallaons.com>, <citizensonepersonallones.com>, and <citizens1loan.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 1, 2019
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