Citigroup Inc. and Citigroup Global
Markets, Inc. d/b/a Smith Barney v. Asia Ventures
Claim
Number: FA0504000453926
Complainants are
Citigroup Inc. and Citigroup Global Markets, Inc. d/b/a Smith Barney (collectively
“Complainant”), represented by Paul D.
McGrady, of Greenberg Traurig LLP, 77 West Wacker Drive, Suite 2500,
Chicago, IL 60601. Respondent is Asia Ventures, Inc. (“Respondent”), GPO
11136, Central, HK.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <citifinacial.com>, <smithbarneyaccess.com>,
<solamonsmithbarney.com>, <solomansmithbarney.com>
and <salomonsmithbarneyaccess.com>, registered with The
Registry At Info Avenue d/b/a IA Registry.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 11, 2005.
On
April 14, 2005, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the National Arbitration Forum that the domain names <citifinacial.com>,
<smithbarneyaccess.com>, <solamonsmithbarney.com>, <solomansmithbarney.com>
and <salomonsmithbarneyaccess.com> are registered with The
Registry At Info Avenue d/b/a IA Registry and that Respondent is the current
registrant of the names. The Registry At Info Avenue d/b/a IA Registry has
verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA
Registry 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
April 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 9, 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@citifinacial.com, postmaster@smithbarneyaccess.com,
postmaster@solamonsmithbarney.com, postmaster@solomansmithbarney.com and
postmaster@salomonsmithbarneyaccess.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
May 12, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citifinacial.com>,
<smithbarneyaccess.com>, <solamonsmithbarney.com>, <solomansmithbarney.com>
and <salomonsmithbarneyaccess.com> domain names are confusingly
similar to Complainant’s CITI, SMITH BARNEY and SALOMON SMITH BARNEY marks.
2. Respondent does not have any rights or
legitimate interests in the <citifinacial.com>, <smithbarneyaccess.com>,
<solamonsmithbarney.com>, <solomansmithbarney.com>
and <salomonsmithbarneyaccess.com> domain names.
3. Respondent registered and used the <citifinacial.com>,
<smithbarneyaccess.com>, <solamonsmithbarney.com>, <solomansmithbarney.com>
and <salomonsmithbarneyaccess.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
Citigroup Inc. and Complainant Citigroup Global Markets, Inc. d/b/a Smith
Barney (“Smith Barney”) are international financial services providers. Smith Barney became a wholly owned
subsidiary of Traveler’s Group (formed by the acquisition of Traveler’s Corp.
by Primerica). In 1997, Smith Barney
Holdings Inc., the brokerage arm of Traveler’s Group, was combined with Salomon
Inc. to form Smith Barney Holdings Inc., an affiliate of Citigroup Global
Markets Inc. which is a subsidiary of Citigroup, Inc.
Complainant has
registered numerous marks with the United States Patent and Trademark Office
(“USPTO”), including CITI (Reg. No. 1,181,467 issued December 8, 1981), SMITH
BARNEY (Reg. No. 1,986,596 issued July 16, 1996) and SALOMON SMITH BARNEY (Reg.
No. 2,383,680 issued September 5, 2000).
Respondent
registered the <citifinacial.com> domain name on January 7, 2002,
the <smithbarneyaccess.com> domain name on January 7, 2003, the <solamonsmithbarney.com>
domain name on December 24, 2001, the <solomansmithbarney.com>
domain name on July 3, 2001 and the <salomonsmithbarneyaccess.com>
domain name on December 25, 2001.
Respondent’s domain names resolve to a website that features links to
competing financial services websites.
Additionally, the website to which Respondent’s <salomonsmithbarneyaccess.com>
domain name resolves contains a notice that the domain name registration is for
sale.
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 has
established rights in the CITI, SMITH BARNEY and SALOMON SMITH BARNEY marks
through registration of the marks with the USPTO. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark); see also 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.”).
Respondent’s <citifinacial.com>
domain name is confusingly similar to Complainant’s CITI mark because
Respondent’s domain name incorporates Complainant’s mark in its entirety and
adds the term “finacial,” a misspelled variation of the term “financial” which
describes Complainant’s business. Such
addition is insufficient to negate the confusing similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075
(WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com>
is confusingly similar to the complainant’s mark since it merely adds the word
“auction” used in its generic sense); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8,
2000) (finding that the domain names, <davemathewsband.com> and
<davemattewsband.com>, are common misspellings and therefore confusingly
similar).
Additionally,
Respondent’s <smithbarneyaccess.com> and <salomonsmithbarneyaccess.com>
domain names are confusingly similar to Complainant’s SMITH BARNEY and SALOMON
SMITH BARNEY marks, respectively, because the domain names incorporate the
marks in their entirety and merely add the generic term “access.” Such a minor addition is not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see
also Westfield Corp. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the WESTFIELD mark was the dominant
element).
Furthermore,
Respondent’s <solamonsmithbarney.com> and <solomansmithbarney.com>
domain names are confusingly similar to Complainant’s SALOMON SMITH BARNEY mark
as they feature commonly misspelled variations of the name “salomon.” Such minor alterations are insufficient to
overcome a finding of confusing similarity between Respondent’s domain names
and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Toronto-Dominion
Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain
names <tdwatergouse.com> and <dwaterhouse.com> are virtually
identical to the complainant’s TD WATERHOUSE name and mark).
Moreover,
Respondent’s domain names omit the spaces between the terms in Complainant’s
marks and add the generic top-level domain “.com.” Such minor changes are not enough to distinguish Respondent’s
domain names from Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See 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.”); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain names, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the disputed domain names 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent lacks
rights and legitimate interests in the disputed domain name.”).
Respondent is
using the disputed domain names, which are confusingly similar to
Complainant’s marks, to operate a website that features links to competing
financial services websites. Such
competing use is not a use in connection with 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). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services); see
also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that the respondent had no rights or legitimate interests in a domain
name that used the complainant’s mark to redirect Internet users to a
competitor’s website).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain names or authorized to register domain names featuring
Complainant’s marks. Thus, the Panel
finds that Respondent has not established rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the respondent’s WHOIS
information implies that the respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where the respondent
was not commonly known by the mark and never applied for a license or
permission from the complainant to use the trademarked name).
Moreover,
Respondent’s offer on its website to sell the <salomonsmithbarneyaccess.com>
domain name registration is further evidence that Respondent lacks rights and
legitimate interests in the <salomonsmithbarneyaccess.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
May 27, 2003) (holding that under the circumstances, the respondent’s apparent
willingness to dispose of its rights in the disputed domain name
suggested that it lacked rights or legitimate interests in the domain name); see
also Hewlett-Packard Co. v. High
Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where the respondent registered the
domain name with the intention of selling its rights).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar domain names to operate a website that features
links to competing financial services websites. The Panel finds that such competing use constitutes disruption
and 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 the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
the respondent diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
Additionally, a
notice on the website at Respondent’s <salomonsmithbarneyaccess.com>
domain name indicates that the domain name registration is for sale. Such statement is evidence that Respondent
registered and used the disputed domain name primarily for the purpose of
selling the domain name registration in bad faith pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679
(Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered
domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (“[G]eneral offers to sell the domain name, even if no certain
price is demanded, are evidence of bad faith.”).
The Panel infers that Respondent receives click-through fees for
diverting Internet users to the competing financial services websites. Because Respondent’s domain names are
confusingly similar to Complainant’s marks, consumers accessing Respondent’s
domain names may become confused as to Complainant’s affiliation with the
resulting websites. The Panel finds
that Respondent’s commercial use of the disputed domain name constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent
profits from its diversionary use of the complainant’s mark when the domain
name resolves to commercial websites and the respondent fails to contest the
Complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also Qwest
Communications Int’l Inc. v. Ling Shun Shing, FA
187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, Respondent registered and used the disputed domain
names with actual or constructive knowledge of Complainant’s rights in the
CITI, SMITH BARNEY and SALOMON SMITH BARNEY marks due to Complainant’s
registration of the marks with USPTO. Moreover,
the Panel infers that Respondent registered the domain names with actual
knowledge of Complainant’s mark due to the obvious connection between
Respondent’s websites and Complainant’s business. Registration of domain names that are confusingly similar to
another’s marks despite actual or constructive knowledge of the mark holder’s
rights in the marks is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the complainant’s mark when it registered the subject
domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <citifinacial.com>, <smithbarneyaccess.com>,
<solamonsmithbarney.com>, <solomansmithbarney.com>
and <salomonsmithbarneyaccess.com> domain names be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court, NY (Ret.)
Dated:
May 19, 2005
National Arbitration Forum
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