Citigroup, Inc. v. 50.com domain/web design/web
Claim Number: FA0611000831079
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 50.com domain/web design/web (“Respondent”), 6 Mars Park, Boonton, NJ 07005.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwlcitigroup.com>, registered with Domainbank.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2006.
On November 2, 2006, Domainbank confirmed by e-mail to the National Arbitration Forum that the <wwwlcitigroup.com> domain name is registered with Domainbank and that Respondent is the current registrant of the name. Domainbank has verified that Respondent is bound by the Domainbank 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 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@wwwlcitigroup.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwlcitigroup.com> domain name is confusingly similar to Complainant’s CITIGROUP mark.
2. Respondent does not have any rights or legitimate interests in the <wwwlcitigroup.com> domain name.
3. Respondent registered and used the <wwwlcitigroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup, Inc., is a world-renowned financial
services company that provides a wide-range of financial services to consumers
and corporate customers worldwide.
Complainant and its predecessors in interest have been providing
financial services since at least 1976, and hold a variety of trademark and
service mark registrations throughout the world. Complainant holds a trademark registration with the United States
Patent and Trademark Office (“USPTO”) for the CITIGROUP mark (Reg. No.
2,406,753 issued November 21, 2000).
Respondent registered the <wwwlcitigroup.com> domain name on February 13, 2005. Respondent’s disputed domain name resolves to a website located at the <bodymassage.com> domain name that displays hyperlinks to various third-party websites, some of which are in direct competition 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’s registration with the USPTO sufficiently establishes Complainant’s rights in the CITIGROUP mark. See 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.”); 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 [or] have acquired secondary meaning.”).
The Panel finds that Respondent’s <wwwlcitigroup.com> domain name is confusingly similar to Complainant’s CITIGROUP mark as the disputed domain name contains Complainant’s mark in its entirety along with the common Internet prefix “www” and the letter “l.” The Panel finds that the addition of the “www” and “l” to the front of Complainant’s mark is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name under Policy ¶ 4(a)(i). See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks rights and legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the <wwwlcitigroup.com> domain name. 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).”).
Complainant asserts that Respondent is not authorized to use Complainant’s CITIGROUP mark and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <wwwlcitigroup.com> domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights or legitimate interests where the respondent was not commonly known by the mark and had never applied for a license or permission from the complainant to use the trademarked name. See 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). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The evidence on record shows that Complainant is using the disputed domain name to redirect Internet users to the <bodymassage.com> website that displays hyperlinks to third-party websites, some of which are in direct competition with Complainant. The Panel infers that such use is for Complainant’s commercial benefit through the earning of click-through fees. Such use is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel further finds Respondent’s lack of rights and legitimate interests in the <wwwlcitigroup.com> domain name is demonstrated by Respondent’s offer to sell the disputed domain name to Complainant for $5,000. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
The Panel finds that Respondent is using the <wwwlcitigroup.com> domain name
to benefit commercially from the good will associated with Complainant’s
CITIGROUP mark through the earning of click-through fees. The Panel further finds that the disputed
domain name is capable of creating a likelihood of confusion as to the source
and affiliation of Complainant with the <wwwlcitigroup.com>
domain name and corresponding website.
In Drs. Foster & Smith, Inc.
v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), the panel found bad
faith where the respondent directed Internet users seeking the complainant’s
site to its own website for commercial gain.
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)).
Therefore, the Panel finds that such use constitutes bad faith
registration and use under Policy ¶ 4(b)(iv).
Respondent’s offer to
sell the disputed domain name to Complainant for $5,000 is evidence of bad
faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus
Group, Inc. v. AchievementTec, Inc., FA
192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell
the domain name for $2,000 sufficient evidence of bad faith registration and
use under Policy ¶ 4(b)(i)); see also Little Six, Inc. v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell
the domain name at issue to the complainant was evidence of bad faith).
The Panel finds additional evidence of bad faith
registration and use under Policy ¶ 4(a)(iii) as the Panel finds the disputed
domain name to be a typosquatted domain name. Due to the proximity of the
letter “l” on the keyboard to the period key, which usually follows the “www”
in a domain name, the Panel finds that the <wwwlcitigroup.com>
domain name takes advantage of a common typographical error, and thus is a
typosquatted version of Complainant’s mark.
See Nat’l Ass’n of Prof’l Baseball
League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting
… is the intentional misspelling of words with [the] intent to intercept and
siphon off traffic from its intended destination, by preying on Internauts who
make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s
registration and use of [the <zonelarm.com> domain name] that capitalizes
on the typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(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 <wwwlcitigroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 15, 2006
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