Citigroup Inc. v. - aka Birgit
Klostermann
Claim
Number: FA0506000505498
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 – aka Birgit Klostermann
(“Respondent”), P.O. Box No. 71826, KCPO, Central, HK.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <citiaadvantage.com> and <citibanknri.com>,
registered with Enom, Inc. and That Darn Name, Inc..
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically June 24,
2005; the National Arbitration Forum received a hard copy of the Complaint June
27, 2005.
On
June 29, 2005, That Darn Name, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <citibanknri.com> is
registered That Darn Name, Inc. and that Respondent is the current registrant
of the name. That Darn Name, Inc. verified that Respondent is bound by the That
Darn Name, Inc. registration agreement and thereby has 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 30, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <citiaadvantage.com> is registered Enom, Inc.
and that Respondent is the current registrant of the name. Enom, Inc. verified
that Respondent is bound by the Enom, Inc. registration agreement and thereby
has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
July 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 21, 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@citiaadvantage.com and postmaster@citibanknri.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 28, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks
Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain names that Respondent
registered, <citiaadvantage.com> and <citibanknri.com>
domain names are confusingly similar to Complainant’s CITI and CITIBANK marks.
2. Respondent has no rights to or legitimate
interests in the <citiaadvantage.com> and <citibanknri.com>
domain names.
3. Respondent registered and used the <citiaadvantage.com>
and <citibanknri.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Citigroup, Inc., is a worldwide provider of financial services. Through its CITI family of marks,
Complainant provides commercial banking services, insurance, mortgages, bill
pay services, investment advisory services, and credit card services. Complainant operates over 1,700 branches
worldwide and has a presence in approximately 100 countries.
Complainant owns
rights in more than 100 registered trademarks.
Most notably, Complainant registered the CITI mark (Reg. No. 1,181,467
issued December 8, 1981, renewed January 10, 2002) and the CITIBANK mark (Reg.
No. 691,815 issued January 19, 1960, renewed June 29, 2000) with the United
States Patent and Trademark Office (“USPTO”).
Respondent
registered the <citiaadvantage.com> and <citibanknri.com>
domain names on November 19, 2003 and November 25, 2004, respectively. Respondent’s <citiaadvantage.com>
domain name resolves to a website that features links to various competing and
non-competing commercial websites. The <citibanknri.com>
domain name does not resolve to an active website.
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
will draw such inferences as the Panel 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 Complainant to 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
provided extrinsic evidence to establish its rights in its CITI and CITIBANK
marks through registration with the USPTO.
Evidence of trademark registration creates a prima facie case for
Complainant, shifting the burden onto Respondent to rebut such an
assumption. Due to Respondent’s failure
to bring forth evidence suggesting otherwise, Complainant established rights in
the CITI and CITIBANK marks pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("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 Innomed Techs., 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.”).
Complainant
asserts that Respondent’s <citiaadvantage.com> and <citibanknri.com>
domain names are confusingly similar to Complainant’s CITI and CITIBANK
marks. Respondent’s <citiaadvantage.com>
domain name incorporates Complainant’s entire CITI mark while adding the letter
“a” and the generic term “advantage.”
Such distinctions have been ruled insignificant by Panels as they fail
to properly differentiate Complainant’s registered trademark from Respondent’s
domain name and creates the potential for confusion amongst Internet
users. See Oki Data Ams., Inc. v.
ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name
wholly incorporates a Complainant’s registered mark is sufficient to establish
identity or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see also 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
Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000)
(finding that four domain names that added the descriptive words
"fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark).
Respondent’s <citibanknri.com> domain name features
Complainant’s entire CITIBANK mark in addition to the acronym “nri.” The acronym “nri” stands for “Non-resident
Indian” which is a generic term used in identifying a particular consumer
group. As stated above, adding generic
terms fails to properly distinguish Respondent’s domain name from Complainant’s
registered trademark pursuant Policy ¶ 4(a)(i). See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO
Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is
confusingly similar to the Complainant's trade mark ‘AXA’” because “common
geographic qualifiers or generic nouns can rarely be relied upon to
differentiate the mark if the other elements of the domain name comprise a mark
or marks in which another party has rights”); see also Am. Online,
Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11,
2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark
and merely added the descriptive terms “traffic school,” “defensive driving,”
and “driver improvement” did not add any distinctive features capable of
overcoming a claim of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has rights to and legitimate interests in the marks
contained within the disputed domain names and asserts that Respondent lacks
such rights and legitimate interests in the disputed <citiaadvantage.com>
and <citibanknri.com> domain names. This creates a prima facie case under Policy ¶ 4(a)(ii),
shifting the burden onto Respondent to provide evidence that rights or
legitimate interests do, in fact, exist.
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (holding that, where the complainant has asserted that the respondent has
no rights or legitimate interests with respect to the domain name, it is
incumbent on the 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 G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”). Because Respondent failed to respond, the
Panel infers that Respondent lacks rights and legitimate interests in the
disputed domain names pursuant to Policy 4(a)(ii). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive
answer in a timely fashion, the Panel accepts as true all of the allegations of
the complaint.”).
Furthermore, the
disputed domain name <citiaadvantage.com> resolves to a website
featuring links to various competing and non-competing commercial
websites. Presumably, Respondent
recieves click-through fees for providing this service based on the number of
misdirected users. Such use is not an
activity associated with a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the
respondent’s use of the disputed domain name to host a series of hyperlinks and
a banner advertisement was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the domain name).
The disputed
domain name <citibanknri.com>, on the other hand, is being
passively held, as it does not resolve to an active website. The Panel infers from this failure of use
that Respondent lacks rights and legitimate interests pursuant to Policy ¶
4(a)(ii). See Am. Home Prods. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where the respondent merely
passively held the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001)
(finding no rights or legitimate interests where the respondent made no use of
the infringing domain names).
Finally, no
evidence has been presented showing that Respondent is commonly known by either
of the disputed domain names.
Respondent’s WHOIS information states that the registrant’s name is –
aka Birgit Klostermann and gives no other indication that suggests Respondent
is known by any other name. Without a
response from Respondent presenting evidence to the contrary, the Panel accepts
Complainant’s assertions that no rights or legitimate interests exist pursuant
to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The <citiaadvantage.com>
domain name is used to redirect Internet users to various competing and
noncompeting websites for Respondent’s commercial gain. Such a diversionary use is likely to create
confusion in Internet users as to Complainant’s sponsorship and affiliation
with the resulting websites.
Respondent’s activities are evidence of bad faith registration and use
pursuant to policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
The disputed
domain name <citibanknri.com>, on the other hand, does not resolve
to an active website. Panels have long
found that passively holding a domain name, as is the case here, is evidence in
and of itself of bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that the respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy).
Moreover,
Respondent registered the <citiaadvantage.com> and <citibanknri.com>
domain names with constructive or actual knowledge of Complainant’s rights in
the CITI and CITIBANK marks.
Complainant’s registration with the USPTO gives Respondent constructive
knowledge of Complainant’s rights in the marks. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002) (“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 Victoria’s Cyber Secret Ltd. v. V Secret
Catalogue, Inc., 161 F.Supp.2d 1339, 1349
(S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark
or service mark] is constructive notice of a claim of ownership so as to
eliminate any defense of good faith adoption” pursuant to 15 U.S.C. §
1072). In addition, Respondent’s <citiaadvantage.com>
domain name resolves to a website that has an obvious connection with the
business in which Complainant is engaged.
Registration of confusingly similar domain names in spite of
constructive or actual knowledge of another’s marks is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See 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”); see also 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 Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”).
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 <citiaadvantage.com> and <citibanknri.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 11, 2005
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