Citigroup Inc. v. Catherine Lally
Claim Number: FA0610000828945
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 Catherine Lally (“Respondent”), 7000 Burlington Ave #214, St. Pete, FL 33710.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <citifinancialgroup.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 30, 2006.
On October 30, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <citifinancialgroup.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. 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 November 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 22, 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@citifinancialgroup.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citifinancialgroup.com> domain name is confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citifinancialgroup.com> domain name.
3. Respondent registered and used the <citifinancialgroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., is one of the world’s largest financial services companies. Complainant was formed in 1998, when Citicorp and Travelers Group Inc. merged to create Complainant. Complainant holds the trademark registration for the CITI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,181,467 issued December 8, 1981).
Respondent’s <citifinancialgroup.com> domain name, which it registered on February 10, 2005, resolves to a website promoting competing financial services companies. Respondent’s website also features a link indicating that the disputed domain name was for sale and to contact Respondent if interested in making an offer.
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.
Due to Complainant’s valid trademark registrations with the USPTO, the Panel finds that Complainant has established rights in the CITI mark pursuant to Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
The Panel further finds that Respondent has failed to
sufficiently distinguish the <citifinancialgroup.com> domain name
from Complainant’s mark by merely adding two terms to the end of the mark that
describe Complainant’s business. In Parfums
Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000), the
panel held that the respondent’s four domain names were confusingly similar to
the complainant’s DIOR mark because each merely added a descriptive word such
as “fashion” or “cosmetics,” areas in which the complainant was highly
successful. In Am. Int’l Group,
Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the
panel found that the respondent’s addition of the term “assurance” to the
complainant’s AIG mark did not sufficiently differentiate the domain name from
the mark because the appended term related directly to the complainant’s
business. Because Respondent’s <citifinancialgroup.com>
domain name also contains Complainant’s CITI mark combined with terms
describing Complainant’s business, the contested domain name is confusingly
similar to the mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has sufficiently satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or
legitimate interests in the <citifinancialgroup.com>
domain name. Complainant must
first make a prima facie case in support of its assertions, and the
burden then shifts to Respondent to show that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Hanna-Barbera
Productions, Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the contested domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name); see also Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <citifinancialgroup.com> domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); 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”).
However, the Panel will now
examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
The WHOIS information lists the contested domain name
registrant as “Catherine Lally,” and there is no other evidence in the record
suggesting that Respondent is commonly known by the contested
domain name. As a result,
Respondent has not established rights or legitimate interests in the <citifinancialgroup.com> domain name
pursuant to Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Aug. 3, 2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); 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.”).
Moreover, Respondent is using the <citifinancialgroup.com>
domain name to redirect Internet users seeking information on Complainant’s
financial services to a website displaying links to competing financial services
companies. In Expedia, Inc. v.
Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), the panel found the
respondent’s use of a domain name to divert consumers to other travel websites
that competed with the complainant was 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). Because Respondent is using the contested
domain name in a similar fashion and presumably profiting from its diversion of
Internet users to competing websites, the Panel concludes that Respondent does
not have rights or legitimate interests in the contested domain name pursuant
to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
See 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.”).
The Panel finds that Complainant has sufficiently satisfied Policy ¶ 4(a)(ii).
Respondent’s website at the <citifinancialgroup.com>
domain name contains a link at the top of the page indicating that Respondent
is offering the domain name in dispute for sale and suggesting that Internet
users make an offer to buy the <citifinancialgroup.com> domain
name. Respondent’s general offer to
sell the disputed domain name provides evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(i). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see
also Banca Popolare Friuladria
S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where
the respondent offered the domain names for sale).
Respondent’s <citifinancialgroup.com> domain name, which includes Complainant’s CITI mark, resolves to a website featuring links to Complainant’s direct competitors in the financial services industry. In Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 11, 2001), the respondent registered the <ticketmaster.net> domain name, which included the complainant’s TICKETMASTER mark, and was using it to redirect Internet users to a competing website at the <ticketpro.com> domain name. The panel found that such use constituted bad faith registration and use, because “[s]uch actions clearly manifest an intent of the [r]espondent to commercially benefit from the ensuing confusion of Internet users” who enter the disputed domain name attempting to reach the complainant’s website but are instead directed to the respondent’s website. Id. Here, Respondent is also redirecting Internet users seeking Complainant’s products and services to competing websites for its own commercial gain, is therefore taking advantage of the confusing similarity between the disputed domain name and Complainant’s CITI mark, and profiting from the goodwill associated with the mark in violation of Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
In addition, Respondent has registered and is using the contested domain name to redirect Internet users to competing financial services websites. Such use provides evidence that Respondent has registered and used the contested domain name for the purpose of disrupting Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel finds that Complainant has sufficiently satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <citifinancialgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 13, 2006
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