Citigroup Inc. v. Kevin Daste
Claim Number: FA0701000903328
Complainant is Citigroup Inc. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <citicash.com>, <citivisa.com>and <citibuisnesscreditcards.com>registered with Moniker Online Services, Inc. and <citibussinesscreditcards.com> registered with Fabulous.com Pty Ltd.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 26, 2007.
On January 28, 2007; Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the<citibussinesscreditcards.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 January 30, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <citicash.com>, <citivisa.com> and <citibuisnesscreditcards.com> domain names are registered with Moniker Online Services, 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 February 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 2007, 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@citicash.com, postmaster@citivisa.com, postmaster@citibussinesscreditcards.com and postmaster@citibuisnesscreditcards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 28, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <citicash.com>, <citivisa.com>, <citibussinesscreditcards.com> and <citibuisnesscreditcards.com> domain names are confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citicash.com>, <citivisa.com>, <citibussinesscreditcards.com> and <citibuisnesscreditcards.com> domain names.
3. Respondent registered and used the <citicash.com>, <citivisa.com>, <citibussinesscreditcards.com> and <citibuisnesscreditcards.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc.,
is a worldwide financial services company with offices in more than 100
countries. Complainant and its predecessors
in interest have provided a variety of financial services under its CITI mark
since at least 1959. Complainant holds
several trademark registrations with the United States Patent and Trademark
Office (“USPTO”) as well as internationally, for its CITI mark (Reg. No.
1,181,467 issued December 8, 1981) and other variations on this mark.
Respondent registered the <citicash.com> domain name on March 15, 2004, the <citivisa.com> domain name on June 16, 2005, and the <citibuisnesscreditcards.com> and <citibussinesscreditcards.com> domain names on October 2, 2005. Respondent’s disputed domain names either currently or have previously resolved to websites that display hyperlinks for third-party websites, some of which are in direct competition with Complainant. The <citibussinesscreditcards.com> domain name currently has no active use. Additionally, Respondent has been the respondent in several previous UDRP decisions in which the disputed domain names were transferred from Respondent to the respective complainants in those proceedings.
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 trademark registrations
with the USPTO and internationally sufficiently establish
Complainant’s rights in the CITI mark. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”); see also
Reebok Int’l Ltd. v.
The Panel finds that Respondent’s <citicash.com>, <citivisa.com>, <citibussinesscreditcards.com> and <citibuisnesscreditcards.com> domain names are confusingly similar to Complainant’s CITI mark as they contain Complainant’s mark in its entirety with the addition of terms that have an obvious connection to Complainant’s business and the services they offer. Moreover, the addition of generic top-level domains (“gTLDs”) to Complainant’s mark is not enough to render the disputed domain names sufficiently distinct from Complainant’s mark as a gTLD is a required element of all Internet domain names. These additions are not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain names under Policy ¶ 4(a)(i). See 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 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks rights or 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 <citicash.com>, <citivisa.com>, <citibussinesscreditcards.com> and <citibuisnesscreditcards.com> domain names. 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 CITI mark and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information lists Respondent as “Kevin Daste” and there is no other evidence to suggest that Respondent is commonly known by any of the disputed domain names. 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 Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names). Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Respondent’s disputed domain names currently do, or
previously did, resolve to websites that display hyperlinks for 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 accrual of click-through
fees. Such use of Complainant’s mark is
neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding 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); see also Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that
the respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name).
Moreover, although the <citibussinesscreditcards.com> domain name previously
resolved to a website displaying hyperlinks for third-party websites, the
disputed domain name currently has no active use. Failing to actively use a disputed domain
name is further evidence that Respondent lacks rights and legitimate interests
in the disputed domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb.
Forum July 12, 2006) (finding that the respondent’s passive holding of the
disputed domain names demonstrates that the respondent is not using the
disputed domain names for a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP
Int’l, Inc. v. Baker Enters., FA 204112
(Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's
passive holding of the domain name does not establish rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is using the <citicash.com>, <citivisa.com>, <citibussinesscreditcards.com>
and <citibuisnesscreditcards.com> domain names for its
commercial benefit by taking advantage of the goodwill associated with
Complainant’s mark. Additionally, the
disputed domain names are capable of creating a likelihood of confusion as to
the source and affiliation of Complainant with the disputed domain names and
corresponding websites. 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 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)).
Respondent is currently not using the <citibussinesscreditcards.com> domain name. Such inactive use without demonstrable evidence to use the disputed domain name is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See 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); see also 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).
Additionally, Respondent has been the respondent in several
previous UDRP decisions in which the disputed domain names were transferred
from Respondent to the respective complainants in those cases. See The Neiman Marcus Group, Inc. & NM
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.
The disputed domain name, <citivisa.com>, incorporates the trademarks of two separate parties. The Panel conditions its decision on the requirement that Complainant forfeits its interest in the contested domain name if the other represented mark is infringed upon following a transfer of the disputed domain name to Complainant. Complainant states in its Complaint that it agrees to forfeit its interest in the contested domain name if the other represented mark is infringed upon. See G.D. Searle v. Marin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)(Complainant’s continuing control of the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name is contingent upon good faith possession, and Complainant will forfeit its interest in the domain name if it infringes on the other represented marks); see also G.D. Searle v. Dunham, FA 123901 (Nat. Arb. Forum Oct. 9, 2002).
Accordingly, it is Ordered that the <citicash.com>, <citivisa.com>, <citibussinesscreditcards.com> and <citibuisnesscreditcards.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 14, 2007
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