Citigroup Inc. v. Forum LLC
Claim Number: FA0605000714807
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 Forum LLC (“Respondent”), P.O. Box 2331, Roseau, Roseau 00152, DM.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue are <primericafinancialservices.com> and <primeamericafinancialservices.com>, registered with Moniker Online Services, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 25, 2006.
On May 26, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <primericafinancialservices.com> and <primeamericafinancialservices.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 26, 2006 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@primericafinancialservices.com and postmaster@primeamericafinancialservices.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge 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 <primericafinancialservices.com> and <primeamericafinancialservices.com> domain names are confusingly similar to Complainant’s PRIMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <primericafinancialservices.com> and <primeamericafinancialservices.com> domain names.
3. Respondent registered and used the <primericafinancialservices.com> and <primeamericafinancialservices.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., is a financial services company. Primerica Financial Services, Inc., a subsidiary of Complainant, offers insurance, mortgage, and financial services using the PRIMERICA mark. The Panel imputes the use of the PRIMERICA mark by the subsidiary to Complainant for the purposes of this decision. Complainant registered the PRIMERICA mark with the United States Patent and Trademark Office (“USPTO”) on August 23, 1988 (Reg. No. 1,501,588) in connection with its financial services business.
Respondent, Forum LLC, registered the <primericafinancialservices.com> domain name on May 30, 2004, and the <primeamericafinancialservices.com> domain name on October 13, 2004. Respondent’s disputed domain names each resolve to websites featuring links to third-party websites, including websites offering insurance and financial services in direct competition with Complainant. Respondent’s disputed domain names also generate various pop-up advertisements, including advertisements for businesses that compete with Complainant.
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.
The Panel finds that Complainant has established rights in the PRIMERICA mark under Policy ¶ 4(a)(i) through Complainant’s registration of the mark with the USPTO. In Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006), the panel found that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i). Moreover, the panel in Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003), found that the complainant’s registration of the MADD mark with the USPTO established the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). Thus, the Panel in the instant case finds that Complainant has sufficiently demonstrated rights in its PRIMERICA mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <primericafinancialservices.com> domain name is confusingly similar to Complainant’s PRIMERICA mark pursuant to Policy ¶ 4(a)(i), as the domain name consists of Complainant’s mark, with the addition of the terms “financial” and “services,” and the generic top-level domain (“gTLD”) “.com.” The addition of the terms “financial” and “services” does not negate the creation of confusing similarity because the terms describe Complainant’s financial services business. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Am. W. Airlines v. domainchronicle, FA 222038 (Nat. Arb. Forum Feb. 11, 2004) (finding that the respondent’s <americawestairways.com> was confusingly similar to the complainant’s AMERICA WEST AIRLINES mark because the respondent’s domain name still described the complainant and its specific air travel services). Moreover, the addition of the gTLD “.com” is irrelevant in evaluating confusing similarity under Policy ¶ 4(a)(i). See Treeforms, Inc. v. Cayne Indus. Sales, Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
Furthermore, Respondent’s <primeamericafinancialservices.com> domain name is confusingly similar to Complainant’s PRIMERICA mark, because the phonetic similarity between the domain name and the mark is sufficient to render the Respondent’s <primeamericafinancialservices.com> domain name confusingly similar to the mark under Policy ¶ 4(a)(i). In Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002), the panel found the words “quest” and “crest” to be similar in sound and, thus, that the respondent’s <mapcrest.com> domain name and the complainant’s MAP QUEST mark were confusingly similar. See VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and the complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer). Furthermore, the addition of the terms “financial” and “services,” with the gTLD “.com,” compound the confusing similarity between the <primeamericafinancialservices.com> domain name and Complainant’s PRIMERICA mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Therefore, the Panel finds that Respondent’s <primeamericafinancialservices.com> domain name is confusingly similar to Complainant’s registered PRIMERICA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant must initially demonstrate Respondent’s lack of rights and legitimate interests in connection with the disputed domain names. Nevertheless, once Complainant establishes a prima facie case, the burden shifts to Respondent to establish that it possesses rights or legitimate interests with respect to the disputed domain names consistent with Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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).”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests in connection with the disputed domain names pursuant to Policy ¶ 4(c).
The Panel finds that the evidence on record fails to demonstrate that Respondent is commonly known by the <primericafinancialservices.com> or <primeamericafinancialservices.com> domain names pursuant to Policy ¶ 4(c)(ii). According to the WHOIS information for the disputed domain names, Respondent is commonly known as “Forum LLC.” Pursuant to the panel in Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), a respondent does not have rights in a domain name when the respondent is not known by the mark. Furthermore, the record is devoid of any evidence indicating that Respondent is a licensee of Complainant or an authorized user of Complainant’s PRIMERICA mark. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found that the respondent lacked 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. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names in accord with Policy ¶ 4(c)(ii).
The evidence on record suggests that the disputed domain names resolve to websites featuring links to third-party websites, some of which compete with Complainant’s business, and a series of pop-up advertisements. Prior panels have held that similar use of a disputed domain name does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel found that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services. Moreover, in Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003), the panel held that the respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain names. Thus, in the instant case, the Panel finds that Respondent has not demonstrated rights or legitimate interests with respect to the <primericafinancialservices.com> and <primeamericafinancialservices.com> domain names pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s aforementioned use of the <primericafinancialservices.com>
and <primeamericafinancialservices.com>
domain names to operate websites containing links to Complainant’s competitors
suggests that Respondent registered and used the disputed domain names in bad
faith pursuant to Policy ¶ 4(a)(iii).
In State Fair of Texas v.
Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000), the respondent
registered the <bigtex.net> domain name in order to infringe on the
complainant’s goodwill and attract Internet users to the respondent’s
website. Consequently, the panel found
that the respondent registered and used the disputed domain name in bad faith
under Policy ¶ 4(b)(iv). Furthermore,
in Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002), the panel
found 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)). Therefore,
Respondent registered and used the disputed domain names in bad faith pursuant
to Policy ¶ 4(b)(iv).
Additionally, in light of Respondent’s use of the disputed domain names to divert Internet users to the websites of Complainant’s competitors, the Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iii). According to the panel in Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000), a respondent violates Policy ¶ 4(b)(iii) when the respondent has diverted business from the complainant to a competitor’s website. See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites). Consequently, the Panel finds that Respondent registered and used the <primericafinancialservices.com> and <primeamericafinancialservices.com> domain names to disrupt the business of Complainant, evincing bad faith registration and use under Policy ¶ 4(b)(iii).
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 <primericafinancialservices.com> and <primeamericafinancialservices.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 11, 2006
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