Citigroup Inc. v. LaPorte Holdings, Inc.
Claim
Number: FA0501000404547
Complainant is Citigroup Inc. (“Complainant”),
represented by Paul D. McGrady of Greenberg Traurig, LLP,
77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is LaPorte
Holdings, Inc. (“Respondent”), 2202 S. Figueroa Street, Suite 721, Los
Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <citibanksavings.com> and <primericagosolo.com>,
registered with Nameking.com, Inc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 18, 2005.
On
January 24, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names
<citibanksavings.com> and <primericagosolo.com>
are registered with Nameking.com, Inc. and that Respondent is the current
registrant of the names. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, Inc. registration agreement and has thereby agreed
to resolve domain name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
January 25, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 14, 2005 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@citibanksavings.com and
postmaster@primericagosolo.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 18, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed John
J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Respondent’s
<primericagosolo.com> domain name incorpates numerous parties’
marks and interests. More specifically,
the following companies are implicated by way of Respondent’s domain name:
Primerica (Complainant’s subsidiary) (PRIMERICA) and Go Solo Technologies, Inc.
(GO SOLO). Due to practical limitations
inherent in the UDRP, cooperative complaint initiation is unlikely and
unfeasible. Because Complainant initiated
this dispute prior to any other interested party it has the opportunity to acquire
the domain name, while seeking to protect its PRIMERICA mark from an infringing
use. However, due to the procedural
complexities presented by the current dispute the following issue must be
addressed: that Complainant seeks acquisition of the subject domain name in
good faith, and will forfeit its interest in the contested domain name if the
other represented marks are infringed upon following a transfer of the domain
name registration to Complainant. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(Complainant’s continuing control of the
<viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name is contingent upon good faith possession, and
Complainant will forfeit its interest in the domain name if it infringes on the
other represented marks).
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citibanksavings.com>
and <primericagosolo.com> domain names are confusingly similar to
Complainant’s CITIBANK and PRIMERICA marks.
2. Respondent does not have any rights or
legitimate interests in the <citibanksavings.com> and <primericagosolo.com>
domain names.
3. Respondent registered and used the <citibanksavings.com>
and <primericagosolo.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Citigroup Inc., is a world-renowned financial services company. Complainant, through its wholly owned
subsidiaries, Citicorp, Citibank and Primerica Financial Services, Inc., owns
an extensive family of famous trademarks and service marks comprised of or
featuring the CITI and PRIMERICA marks.
Complainant,
through Citibank, has provided a broad range of financial services including
traditional commercial banking services, such as checking accounts, savings
accounts, loans, credit and debit cards, insurance, mortgages, bill payment
services, brokerage services and investment advisory services, as well as
related products and services.
Complainant, through Citibank, has an active presence worldwide, with
over 1,700 branches and 5,100 ATMs in approximately one hundred countries.
Complainant,
through Primerica, serves more than six million clients in North America. In addition to life insurance, Complainant’s
core goods and services include debt consolidation loans, first mortgages,
variable annuities, long term care, retirement savings vehicles, and programs
to fund education expenses.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the CITIBANK mark (Reg. No. 691,815 issued
January 19, 1960, Reg. No. 2,636,299 issued October 15, 2002, Reg. No.
1,957,180 issued February 20, 1996, Reg. No. 1,048,704 issued September 21,
1976, and Reg. No. 1,016,844 issued July 29, 1975). In addition, Complainant owns a trademark registration with the
USPTO for the PRIMERICA mark (Reg. No. 1,501,588 issued August 23, 1988). Complainant has used the CITIBANK mark in
commerce since February 1959 and the PRIMERICA mark in commerce since January
1975 for financial-related services.
Respondent
registered the <citibanksavings.com> and <primericagosolo.com>
domain names on October 1 and October 28, 2003, respectively. Respondent is using the domain names to
direct Internet users to third party websites, which predominantly offer the
same types of services as Complainant and pop-up advertisements.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of the
Rules.
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.
Complainant
established with extrinsic proof in this proceeding that it has rights to the
CITIBANK and PRIMERICA marks as evidenced by its registration with the USPTO
and its use of the mark in commerce over the last forty-five and thirty years,
respectively. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000)
(finding that the failure of Complainant to register all possible domain names
that surround its substantive mark does not hinder Complainant’s rights in the
mark. “Trademark owners are not required to create ‘libraries’ of domain names
in order to protect themselves”).
The domain name
registered by Respondent, <citibanksavings.com>, is confusingly
similar to Complainant’s CITIBANK mark because the domain name incorporates
Complainant’s mark in its entirety and simply adds the generic or descriptive
term “savings.” The mere addition of a
generic or descriptive term to a registered mark does not negate the confusing
similarity of Respondent’s domain name purusant to Policy ¶ 4(a)(i). See Space
Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty.
Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name
<bramblesequipment.com> is confusingly similar because the combination of
the two words "brambles" and "equipment" in the domain name
implies that there is an association with Complainant’s business).
In addition,
Respondent’s <primericagosolo.com> domain name is confusingly
similar to Complainant’s PRIMERICA mark because the domain name wholly
incorporates Complainant’s mark and the third party mark GO SOLO. The mere addition of a third party mark does
not significantly distinguish the domain name from Complainant’s mark pursuant
to Policy ¶ 4(a)(i). See G.D.
Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat.
Arb. Forum June 3, 2002) (“The Panel concludes that the
<viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name
is confusingly similar to Complainant’s CELEBREX mark because the mere addition
of related competing products’ names in the domain name does not defeat a
confusing similarity claim.”); see also G.D. Searle & Co. v. Pelham,
FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other
drug names does not create a distinct mark capable of overcoming a claim of
confusing similarity, “it merely creates a domain name with severe potential to
confuse Internet users as to the source, sponsorship and affiliation of the
domain”).
Therefore,
Complainant has established that the disputed domain names are confusingly
similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
Complainant has
alleged that Respondent has no rights or legitimate interests in the <citibanksavings.com>
and <primericagosolo.com> domain names that contain in their
entirety Complainant’s CITIBANK and PRIMERICA marks. The burden shifts to Respondent to show that it has rights or
legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because Respondent never submitted a response or
provided the Panel with evidence to suggest otherwise); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”).
Furthermore,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the disputed domain names. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also RMO,
Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Respondent is
using the <citibanksavings.com> and <primericagosolo.com>
domain names to direct Internet users to websites that feature pop-up
advertisements and links to a variety of services, predominantly sites that
offer the same type of services that Complainant offers. Respondent’s use of domain names that are
confusingly similar to Complainant’s CITIBANK and PRIMERICA marks dilute
Complainant’s marks by diverting Internet users to websites unrelated to the
marks and therefore the domain names are not being used in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the domain names pursuant to Policy ¶
4(c)(iii). See Wells Fargo & Co.
v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding
that Respondent’s use of confusingly similar
derivatives of Complainant’s WELLS FARGO mark to divert Internet users to
websites featuring pop-up advertisements was not a bona fide offering of goods
or services); see also Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links
to other websites, is not a legitimate use of the domain names); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use); see also TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that
Respondent’s diversionary use of Complainant’s marks to send Internet users to
a website which displayed a series of links, some of which linked to
competitors of Complainant, was not a bona fide offering of goods or services).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
intentionally registered domain names that contain in their entirety
Complainant’s well-known marks and did so for Respondent’s commercial
gain. Respondent’s disputed domain
names divert Internet users who seek Complainant’s CITIBANK or PRIMERICA marks
to Respondent’s commercial websites through the use of domain names that are
confusingly similar to Complainant’s marks.
The Panel infers that Respondent is receiving click through fees from
the third party links on its website.
Therefore, Respondent is unfairly and opportunistically benefiting from
the goodwill and reputation associated with Complainant’s mark. Respondent’s practice of diversion, motivated
by commercial gain, through the use of confusingly similar domain names
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through
Respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using Complainant’s famous marks and likeness); see also G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
Respondent is
using the <citibanksavings.com> and <primericagosolo.com>
domain names to provide links to a variety of websites, predominantly sites
that offer financial services.
Complainant is in the financial services business. The Panel finds that, by creating confusion
around Complainant’s marks, Respondent is attempting to disrupt the business of
a competitor. Respondent’s use of
Complainant’s marks to sell goods and services similar to Complainant’s goods
and services is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered the names primarily for the
purpose of disrupting Complainant's business); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain name to
promote competing auction sites).
The Panel finds
that 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 <citibanksavings.com> and <primericagosolo.com>
domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated:
March 4, 2005
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