Citigroup Inc. v. Gene Yarsky
Claim
Number: FA0506000495538
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 Gene Yarsky (“Respondent”),
2080 Coney Island Avenue, Brooklyn, NY 11375.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain names at issue are <mycitimortgage.com> and <mycitirealty.com>,
registered with Go Daddy Software, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 15, 2005.
On
June 14, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <mycitimortgage.com> and <mycitirealty.com>
are registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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
June 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 7, 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@mycitimortgage.com and postmaster@mycitirealty.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
July 12, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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 <mycitimortgage.com>
and <mycitirealty.com> domain names are confusingly similar to
Complainant’s CITI mark.
2. Respondent does not have any rights or
legitimate interests in the <mycitimortgage.com> and <mycitirealty.com>
domain names.
3. Respondent registered and used the <mycitimortgage.com>
and <mycitirealty.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Citigroup Inc., is in the business of providing financial services, including
consumer and commercial lending, credit card services, investment and advisory
services, real estate services and venture capital services, banking services
and numerous other services. Through its wholly owned subsidiaries, Citicorp
and Citibank, N.A., Complainant holds several trademark registrations with the
United States Patent and Trademark Office (“USPTO”) for the CITI mark (e.g.,
Reg. No. 1,181,467 issued December 8, 1981).
Respondent
registered the <mycitimortgage.com> and <mycitirealty.com>
domain names on February 14, 2005.
Respondent is using the disputed domain names to redirect Internet users
to a website featuring information related to consumer loans, mortgage
calculators, and real estate “property finders” in direct competition with
Complainant’s financial business.
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. 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 (Nat. Arb. 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.").
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 mark through several registrations of the mark
with the USPTO and through continuous use of the mark in commerce. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <mycitimortgage.com>
and <mycitirealty.com> domain names are confusingly similar to
Complainant’s CITI mark because the domain names feature Complainant’s mark in
its entirety, add combinations of the words “my,” “mortgage,” and “realty” to
the mark, and add the generic top-level domain “.com.” Furthermore, the words “mortgage” and “realty”
describe Complainant’s products. The Panel
finds that these minor alterations to Complainant’s registered mark are
insufficient to negate the confusingly similar aspects of Respondent’s domain
names pursuant to Policy ¶ 4(a)(i). See
NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000)
(finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT
as a prominent part thereof, is confusingly similar to the Complainant’s trade
name and trademark NIIT”); see also ESPN, Inc. v. MySportCenter.com,
FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name
MYSPORTSCENTER.COM registered by Respondent is confusingly similar to
Complainant’s SportsCenter mark”); see also 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
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to the complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which the complainant is
engaged, does not take the disputed domain name out of the realm of confusing
similarity); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
Furthermore,
Complainant’s CITI mark is a fanciful mark due to its distinctive spelling, so
it is likely that the public would associate the particular spelling found in
the domain names with Complainant’s CITI mark and associated products and
services. See Marriott Int’l, Inc. v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark); see also Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp.
1419, 12 U.S.P.Q.2d 1091, 1098 (D. Minn. 1989) (quoting treatise:
"Fanciful marks, if adopted in a bona fide first use, are considered the
strongest of marks because their inherent novelty creates a substantial impact
on the buyer's mind").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <mycitimortgage.com>
and <mycitirealty.com> domain names. Once Complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to prove that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, the Panel assumes that Respondent does not have rights or
legitimate interests in the disputed domain names. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the
complainant has asserted that respondent does not have rights or legitimate
interests with respect to the domain name it is incumbent on respondent to come
forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the <mycitimortgage.com> and <mycitirealty.com>
domain names to redirect Internet users to a website featuring information
related to consumer loans, mortgage calculators, and real estate “property
finders” in direct competition with Complainant’s financial business. Respondent’s use of domain names that are
confusingly similar to Complainant’s CITI mark to redirect Internet users
interested in Complainant’s products to a website that offers similar goods in
direct competition with Complainant’s business is not a use in connection with
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
nor is it a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also DLJ Long Term
Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”); see also Or. State Bar v. A Special Day, Inc., FA 99657
(Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and
sale of law-related books under Complainant's name is not a bona fide offering
of goods and services because Respondent is using a mark confusingly similar to
the Complainant's to sell competing goods.”).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by either the <mycitimortgage.com>
or <mycitirealty.com> domain name. Thus, Respondent has not established rights or legitimate
interests in the <mycitimortgage.com> and <mycitirealty.com>
domain names pursuant to Policy ¶ 4(c)(ii).
See 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); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark); see also
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <mycitimortgage.com> and <mycitirealty.com>
domain names, which are confusingly similar to Complainant’s CITI mark, to
redirect Internet users to a website featuring information related to consumer
loans, mortgage calculators, and real estate “property finders” in direct
competition with Complainant’s financial business. The Panel finds that such 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)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to a
competing website. Since Respondent’s
domain names are confusingly similar to Complainant’s CITI mark, Internet users
accessing Respondent’s domain names may become confused as to Complainant’s
affiliation with the resulting website.
Thus, Respondent’s use of the <mycitimortgage.com> and <mycitirealty.com>
domain names constitute 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 Drs. Foster &
Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad
faith where the respondent directed Internet users seeking the complainant’s
site to its own website for commercial gain).
Furthermore,
Respondent registered the <mycitimortgage.com> and <mycitirealty.com>
domain names with actual or constructive knowledge of Complainant’s rights in
the CITI mark due to Complainant’s registration of the mark with the
USPTO. Moreover, the Panel infers that
Respondent registered the domain names with actual knowledge of Complainant’s
rights in the mark due to the obvious connection between the content advertised
on Respondent’s website and Complainant’s business. Registration of domain names that are confusingly similar to
another’s mark despite actual or constructive knowledge of the mark holder’s
rights in the mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when the respondent reasonably should have been aware of the complainant’s
trademarks, actually or constructively.”); 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 <mycitimortgage.com> and <mycitirealty.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 22, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum