Citigroup Inc. v. Bradley Sproson
Claim Number: FA1812001822151
Complainant is Citigroup Inc. (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is Bradley Sproson (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citiworldtrade.com> and <citisugar.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.
The Honourable Neil Anthony Brown QC 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 <citiworldtrade.com> and <citisugar.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@citiworldtrade.com, postmaster@citisugar.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 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions:
Complainant, Citigroup Inc., uses their CITI and CITI-formative marks (the “CITI” marks) in connection with banking and financial services. Complainant has rights in the CITI marks based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., CITIBANK- Reg. No. 691,815, registered Jan. 19, 1960; CITI- Reg. No. 1,181,467, registered Dec. 8, 1981). See Amend. Compl. Ex. 3. Respondent’s <citiworldtrade.com> and <citisugar.com> domain names are confusingly similar to Complainant’s CITI marks, as the domain names because they wholly incorporate Complainant’s distinctive CITI mark and are only differentiated by the addition of generic/descriptive terms “world,” “trade,” “sugar,” and the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the <citiworldtrade.com> and <citisugar.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the CITI mark in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain names resolve to a website that purports to offer financial services relating to the agriculture industry in direct competition with Complainant. Respondent also uses the disputed domain names to further an illegal, fraudulent scheme to obtain customer information.
Respondent registered and is using the <citiworldtrade.com> and <citisugar.com> domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain names where it offers competing goods and services. Further, due to the fame and notoriety of Complainant’s marks, Respondent had actual knowledge of Complainant’s rights in the CITI and CITIBANK marks prior to registering and subsequent use of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the banking and financial services industry.
2. Complainant has established it trademark rights in the CITI marks by virtue of their registration with the United States Patent and Trademark Office (“USPTO”) (e.g., CITIBANK- Reg. No. 691,815, registered Jan. 19, 1960; CITI- Reg. No. 1,181,467, registered Dec. 8, 1981).
3. Respondent registered the disputed domain names on September 28, 2017.
4. Respondent has caused the disputed domain names to resolve to a website that purports to offer financial services relating to the agriculture industry in direct competition with Complainant. Respondent also uses the disputed domain names to further an illegal, fraudulent scheme to obtain customer information.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CITI marks based upon registration of the marks with the USPTO (e.g., CITIBANK- Reg. No. 691,815, registered Jan. 19, 1960; CITI- Reg. No. 1,181,467, registered Dec. 8, 1981). See Amend. Compl. Ex. 3. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). The Panel therefore holds that Complainant’s registration of the CITI marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CITI marks. Complainant argues that Respondent’s <citiworldtrade.com> and <citisugar.com> domain names are confusingly similar to the CITI marks, because they wholly incorporate Complainant’s distinctive CITI mark and are only differentiated by the addition of generic/descriptive terms “world,” “trade,” “sugar,” and the generic top-level domain “.com.”. Addition of generic or descriptive terms and a gTLD to a complainant’s mark may not be sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant’s PADI mark: “the inclusion of the suggestive term “vacations” in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark since the term suggests Complainant’s travel related services.”). The Panel agrees that the disputed domain names are confusingly similar to Complainant’s CITI marks per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CITI trademark and to use it in its domain names adding the generic/descriptive terms “world,” “trade,” and “sugar”;
(b) Respondent registered the disputed domain names on September 28, 2017;
(c) Respondent has caused the disputed domain names to resolve to a website that purports to offer financial services relating to the agriculture industry in direct competition with Complainant. Respondent also uses the disputed domain names to further an illegal, fraudulent scheme to obtain customer information;
(d) Respondent has engaged in these activities without the consent or
approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <citiworldtrade.com> and <citisugar.com> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the CITI marks in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain names as “Bradley Sproson,” and no information on record indicated Respondent was authorized to register a domain name with Complainant’s marks. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <citiworldtrade.com> and <citisugar.com> domain names;
(f) Complainant argues Respondent’s lack of rights and legitimate interests in the <citiworldtrade.com> and <citisugar.com> domain names is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the disputed domain names resolve to a website that purports to offer financial services relating to the agriculture industry in direct competition with Complainant. Use of a disputed domain name to offer related services to that of a complainant is not a use 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).”). Complainant has provided screenshots of the web pages associated with the disputed domain names to show services offered by Respondent. See Amend. Compl. Ex. E. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <citiworldtrade.com> and <citisugar.com> domain names per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant further argues Respondent is using the disputed domain names to further an illegal, fraudulent scheme to obtain customer information. Use of a disputed domain name for illegal or fraudulent use does not indicate rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Complainant provides screenshots of the web pages associated with the domain names that asks users for personal information. See Amend. Compl. Ex. E. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <citiworldtrade.com> and <citisugar.com> domain names under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
Secondly, Complainant also contends that in light of the fame and notoriety of Complainant's CITI mark, it is inconceivable that Respondent could have registered the disputed domain names without actual knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are not usually accepted because UDRP decisions have declined 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 is adequate evidence of bad faith under Policy ¶ 4(a)(iii). 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 and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the domain names in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the CITI mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citiworldtrade.com> and <citisugar.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 20, 2019
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