Citigroup Inc. v. Bradley Sproson
Claim Number: FA1812001822149
Complainant is Citigroup Inc. (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is Bradley Sproson (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cititradefinance.com> and <citiforfaiting.com>, registered with NameSilo, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2018; the Forum received payment on December 20, 2018.
On December 21, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <cititradefinance.com> and <citiforfaiting.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2019 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@cititradefinance.com, postmaster@citiforfaiting.com. Also on December 27, 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 January 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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
Complainant, Citigroup Inc., is an American multinational banking and financial services corporation that was founded as the City Bank of New York in 1812. Complainant registered its CITI mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,181,467, registered Dec. 8, 1981) and so has rights therein. Respondent’s <cititradefinance.com> domain name is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and is differentiated only by the addition of the generic and/or descriptive terms “trade” and “finance” and the “.com” generic top-level domain (“gTLD”). Respondent’s <citiforfaiting.com> domain name is also confusingly similar to Complainant’s mark because it merely adds the generic and/or descriptive term “forfaiting” and the “.com” gTLD to the fully incorporated mark.
Respondent does not have rights and legitimate interests in the <cititradefinance.com> and <citiforfaiting.com> domain names. Complainant has not licensed or otherwise authorized Respondent to use its mark in any manner. Furthermore, Respondent is not commonly known by either of the disputed domain names. Additionally, Respondent is not using either of the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to pass off as Complainant in furtherance of a phishing scheme to obtain customer information. Moreover, Respondent directs Internet traffic away from Complainant’s business to a competing webpage that offers identical financial services.
Respondent registered and used the domain names in bad faith. Respondent passes off as Complainant to purport to offer competing services. Additionally, Respondent registered the domain name with full knowledge of Complainant’s rights in the CITI mark.
B. Respondent
Respondent failed to submit a timely Response in this proceeding. Respondent did file a deficient pleading that the Panel reviewed despite having no obligation to do so. Respondent argued that the disputed domain names were not identical or confusingly similar to Complainant’s registered mark because the domains and/or Respondent’s company were sufficiently distinct from Complainant’s mark. Respondent also asserted that Respondent had a bona fide business interest based on the registration of Respondent’s company name in the UK Company House. Respondent’s document fails to address almost all of Complainant’s assertions that specifically correlate with the UDRP Policy. Respondent instead relies on having been in business for a year and claiming that losing the disputed domain names will hurt its business. Because Respondent’s answer failed to raise any substantively valid points of policy or law, as opposed to merely self-serving statements unsubstantiated by any evidence, the Panel does not recognize Respondent’s deficient document in this decision.
Complainant is Citigroup Inc. (“Complainant”), of New York, NY, USA. Complainant is the owner of domestic and international registrations for the mark CITI and related marks, which form the Citigroup family of marks. Complainant has continuously used the CITI mark, and variations thereof, since at least as early as 1960, in connection with its provision of global banking and financial services.
Respondent is Bradley Sproson (“Respondent”), of Congleton, Cheshire, United Kingdom. Respondent’s registrar’s address is listed as Phoenix, AZ, USA. The Panel notes that Respondent registered the <cititradefinance.com> and <citiforfaiting.com> domain names on or about September 7, 2017. Registration of Respondent’s company name in a business register alone in no way establishes Respondent’s exclusive rights in that name, nor provides authority for registration and use of domain names based on the company name that infringe the rights of trademark holders.
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 established rights in its CITI mark through its registration with the USPTO. Registration with a trademark authority, such as the USPTO, confers rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) ( “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registrations for the CITI mark (e.g. Reg. No. 1,181,467, registered Dec. 8, 1981). The Panel here finds that Complainant established rights in the CITI mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <cititradefinance.com> domain name is confusingly similar to Complainant’s CITI mark as it incorporates the mark in its entirety and is differentiated only by the addition of the generic and/or descriptive terms “trade” and “finance” and the “.com” gTLD. Complainant also alleges that Respondent’s <citiforfaiting.com> domain name is confusingly similar to Complainant’s mark because it merely adds the generic and/or descriptive term “forfaiting” and the “.com” gTLD to the fully incorporated mark. The addition of a generic or descriptive term and a gTLD to complainant’s mark does not negate a finding of confusing similarity between a mark and a disputed domain name per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). The Panel here finds that Respondent’s <cititradefinance.com> and <citiforfaiting.com> domain names are confusingly similar to Complainant’s CITI mark.
Respondent raises no substantive contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel notes that 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”). The Panel here finds that Complainant here has made out a prima facie case.
Complainant alleges that Respondent does not have rights or legitimate interests in the <cititradefinance.com> and <citiforfaiting.com> domain names, as it is not commonly known by the either of the names. Complainant claims it has not licensed or otherwise authorized Respondent to use its CITI mark in any manner. Absent contradicting evidence in the record that a respondent was authorized to use complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <cititradefinance.com> and <citiforfaiting.com> domain names list “Bradley Sproson” as the registrant. The Panel here finds that Respondent is not commonly known by the <cititradefinance.com> and <citiforfaiting.com> domain names.
Complainant argues that Respondent is not using either of the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends instead that Respondent uses the disputed domain names to pass off as Complainant in furtherance of a phishing scheme to obtain customer information. Passing off as a complainant in furtherance of a phishing scheme may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). The Panel notes that Complainant submits screenshots of the disputed domain names’ resolving webpages which appear to purport to offer financial services identical and/or highly similar to the financial services offered by Complainant under the CITI mark, creating the false impression that Complainant is endorsing, sponsoring, or is otherwise affiliated with the disputed domain names. The Panel here finds that Respondent failed to use the names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant further argues Respondent’s lack of rights or legitimate interests in the <cititradefinance.com> and <citiforfaiting.com> domain names is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the names resolve to a competing website. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). 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).”). Specifically, Complainant contends that the domain names resolve to a competing webpage that offers identical financial services. Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. The Panel here finds that Respondent does not have rights or legitimate interests in the <cititradefinance.com> and <citiforfaiting.com> domain names.
Respondent raises no substantive contentions with regards to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant argues that the <cititradefinance.com> and <citiforfaiting.com> domain names were registered and used in bad faith because Respondent uses the disputed domain names to pass off as Complainant in order to purport to offer competing services. Passing off as a complainant to purport to offer competing services may evidence a pattern of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel again notes that Complainant submitted screenshots of the disputed domain names’ resolving webpages which appear to offer financial services identical and/or highly similar to the financial services offered by Complainant under the CITI mark, creating the false impression that Complainant is endorsing, sponsoring, or is otherwise affiliated with the disputed domain names. The Panel finds that the registration and use of the <cititradefinance.com> and <citiforfaiting.com> domain names was in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Respondent raises no substantive contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <cititradefinance.com> and <citiforfaiting.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 31, 2019
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