Citadel LLC and its related entity, KCG IP Holdings, LLC v. Jones Steven / E-Millions Pty Ltd
Claim Number: FA1402001544104
Complainant is Citadel LLC, and its related entity, KCG IP Holdings, LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Jones Steven / E-Millions Pty Ltd (“Respondent”), represented by Paul Keating of Law.es, Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <firstcitadelmanagement.com> and <firstcitadelholdings.com>, registered with EuroDNS S.A.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2014; the National Arbitration Forum received payment on February 19, 2014.
On February 20, 2014, EuroDNS S.A. confirmed by e-mail to the National Arbitration Forum that the <firstcitadelmanagement.com> and <firstcitadelholdings.com> domain names are registered with EuroDNS S.A. and that Respondent is the current registrant of the names. EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@firstcitadelmanagement.com and postmaster@firstcitadelholdings.com. Also on February 21, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 7, 2014.
A timely Additional Submission was received from Complainant and determined to be complete on March 12, 2014. Also, a timely Additional Submission was tendered by Respondent and determined to be complete on March 17, 2014. Both such Submissions shall be considered in the Panel’s decision below.
On March 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
- Founded in 1990 and employing more than one thousand professionals in offices worldwide, Complainant is one of the world’s largest and most sophisticated alternative investment institutions.
- Complainant owns registrations for its CITADEL service mark with, among others, the United States Patent and Trademark Office (“USPTO”) and the Commonwealth of Australia.
- The disputed domain names, <firstcitadelmanagement.com> and <firstcitadelholdings.com>, are confusingly similar to Complainant’s CITADEL service mark because they include that mark in its entirety, along with related generic terms (i.e., “first,” “management” and “holdings”) that fail to provide adequate distinction.
- Respondent has no rights or legitimate interests in the disputed domain names. Complainant has granted no license or authorization for Respondent to use the CITADEL service mark. Respondent is not commonly known as the disputed domain name.
- Respondent uses the disputed domain names to resolve to websites displaying a logo that is similar to a logo used by Complainant. Moreover, in the case of <firstcitadelholdings.com>, Respondent’s website as a whole copies the look and feel of Complainant’s office website, <citadelgroup.com>. Such use by Respondent is consistent with neither a bona fide offering of goods or services nor legitimate noncommercial or fair usage.
- The disputed domain names were registered and are being used in bad faith. Respondent had actual knowledge of Complainant’s rights in the CITADEL mark prior to registration of the names. As further evidence of bad faith, Respondent has registered and used those names with the intent to trade on the reputation and goodwill associated with Complainant’s mark.
B. Respondent
- Complainant’s ownership of service mark registrations for CITADEL does not provide Complainant with rights over all phrases or domain names containing that mark. There are more than 100 USPTO registrations that include the word, “citadel,” and thousands of domain names incorporate that word.
- Complainant cannot assert that ownership of <citadel.com> has increased its identification with the CITADEL mark, as Complainant only recently acquired that domain name in October, 2013.
- Complainant has furnished no evidence of actual consumer confusion between its CITADEL mark and the disputed domain names. The words “first”, “management” and “holdings” are significant terms in their own right and are not subservient to the common term, “citadel,” found within the disputed domain names.
-“Citadel” is a common term and may be used legitimately by Respondent in domain names. “Citadel” means a stronghold or fortress, typically on high ground above a city. The term is also commonly used in business to connote strength. The disputed domain names resolve to a website with a logo and a stock photograph of buildings. Respondent’s legitimate interest in the disputed domain names is established by their capability of non-infringing use.
- The logo found on Respondent’s website, attached to the disputed domain names, is dissimilar to Complainant’s logo in many respects.
- Respondent did not have knowledge of Complainant before registration of the disputed domain names. Respondent is not located in the United States of America, but in Australia, where Complainant has not established that it conducts any of its business. For a finding of bad faith to obtain, there must be evidence that Respondent targeted Complainant and its mark at the time of registration.
- Complainant is guilty of reverse domain name hijacking. The disputed domain names are not confusingly similar to Complainant’s service mark because of the additional terms included in the names. Complainant produced no evidence of bad faith registration and use of the disputed domain names by Respondent. Complainant sought to prevail in this case, despite its weak evidentiary showing, based on the hope that Respondent would fail to file a Response. Given the foregoing circumstances, it is clear that the Complaint was filed in bad faith.
C. Complainant’s Additional Submission
- Respondent fails to refute Complainant’s service mark rights in the CITADEL mark, in use for more than twenty-five years, and has not shown any rights or legitimate interests in the disputed domain names.
- Complainant’s business clearly includes financial management and holdings activities.
- The Complaint never refers to <citadel.com>, but asserts that <citadelgroup.com> is Complainant’s primary domain name used for conducting business.
- Respondent’s use of the disputed domain names for “place holder” web pages does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
- Respondent has failed to counter Complainant’s contentions of bad faith registration and use of the disputed domain names. A prior UDRP panel concluded that Complainant’s mark enjoys fame. Moreover, Respondent has misapplied the reasoning found in a prior UDRP decision, which involved a complainant whose mark possessed far less worldwide public recognition than does Complainant’s CITADEL mark.
D. Respondent’s Additional Submission
- In support of its contentions in the Response, Respondent has supplied the Panel with Exhibits regarding correspondence between the parties, registrations relating to the CITADEL mark in the United States and Australia, websites attached to the disputed domain names and Google searches corresponding to those names.
Complainant is a company based in the United States that provides financial investment services to clients throughout the world. Complainant owns service mark registrations for its CITADEL mark with many national and international authorities, including with the USPTO (e.g., Reg. No. 2,812,459; registered Feb. 10, 2004) and in Australia (e.g., Reg. Nos. 1019184 and 1019187; both registered May 16, 2005).
The disputed domain names, <firstcitadelmanagement.com> and <firstcitadelholdings.com>, are owned by Respondent, who is a resident of Australia and who registered the names on March 16, 2012. The disputed domain names are connected to static web pages that include a logo and, in one case, presents a photographic depiction of office buildings.
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."
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.
Because Complainant has supplied the Panel with appropriate evidence of Complainant’s registrations of the CITADEL service mark with the USPTO and in Australia (see Exhibit C), the Panel is persuaded that Complainant has the requisite rights in that mark to satisfy Policy ¶ 4(a)(i). See The Schneider Group, Inc. v. Jack Mann, D2010-0448 (WIPO May 5, 2010) (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”); see also Commonwealth Bank of Australia v. Legal Services, FA 112637 (Nat. Arb. Forum July 23, 2002) (“Complainant established in this proceeding that it has rights in the COLONIAL mark through registration with the Australian Trade Marks Office and by subsequent continuous use.”).
Complainant contends that the disputed names, <firstcitadelmanagement.com> and <firstcitadelholdings.com>, are confusingly similar to its CITADEL mark. On the other hand, Respondent argues that, because the disputed domain names contain other common terms along with the common term, “citadel,” the names are not confusingly similar to Complainant’s mark.
The Panel is inclined to agree with Complainant. The Panel believes that, while “citadel” is a descriptive English language dictionary word, its usage in writings and conversation is far less common than the other descriptive terms, “first,” “management” and “holdings,’’ placed in the disputed domain names. When fairly and reasonably viewed together, the terms comprising the disputed domain names suggest that the more common terms merely augment the dominant and less commonly used central word “citadel.” Moreover, with respect to Complainant’s core business, financial investment services, the words, “management” and “holdings,” may certainly confuse internet users as to whether the disputed domain names simply refer to areas of Complainant’s services. Finally, the addition of the generic top-level domain, “.com,” to each disputed domain name is irrelevant in the consideration of confusing similarity. See Starstruck Entertainment, Inc. v. Screwface Records, FA 1447898 (Nat. Arb. Forum July 23, 2012) (finding <starstruckmanagement.com> and <starstruckmanagement.net> to be confusingly similar to the STARSTRUCK mark); see also Coldwell Banker v. Rahul Rahul, FA 1255841 (Nat. Arb. Forum May 28, 2009) (finding <coldwellbankerfirstrealty.com> to be confusingly similar to the COLDWELL BANKER mark); see also Sears v. Alex Pachan, FA 420527 (Nat. Arb. Forum Apr. 1, 2005 ) (finding <searsholdings.com> to be confusingly similar to the SEARS mark).
Ergo, the Panel finds that Complainant has established that the disputed domain names are identical or confusingly similar to a service mark in which Complainant has rights.
Respondent does not attempt to refute Complainant’s contention that it has granted Respondent no license or permission to use the CITADEL mark. Also, as reasoned above, Complainant has established that the disputed domain names are confusingly similar to that mark. As a result, Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in those names. In order for Respondent to prevail on this issue, the evidence submitted by Respondent must rebut this prima facie case. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent’s primary argument in favor of its rights and legitimate in the disputed domain names centers on the contention that the names are composed of generic or common terms and thus can be employed by Respondent for use in websites that conform to their plain meaning. The Panel notes that there is support in prior UDRP decisions for the proposition that anyone may legitimately acquire common-word domain names for websites that are used to feature content aligned with the meaning of those common words. See Charter Comm., Inc. v. CK Ventures Inc., D2010-0228 (WIPO June 25, 2010) (“Several Policy decisions have concluded that the use of descriptive domain names for paid advertising links or directory pages can be a legitimate commercial activity.”); see also FreedomCard, Inc. v. Kim, D2001-1320 (WIPO Jan. 20, 2002).
However, in this case, the Panel does not detect any real use of the disputed domain names. Respondent concedes that the disputed domain names lead to a static “place-holder” webpage consisting of a logo and, in one case, a photograph of buildings. Moreover, Respondent fails to put forward evidence of any demonstrable preparations to make actual use of the names. This concession and failure compel the Panel to set Respondent’s actions within the class of cases where previous Policy panels have found that mere place-holder employment of a disputed domain name is not “legitimate use” of that name, whether for commercial, noncommercial or fair purposes. Yes, Respondent is correct that use of the disputed domain names need not be commercial; but there must be some real, or verifiably impending, use if rights or legitimate interests are to be found on behalf of Respondent. See Tim Italia S.p.A. v. Esa-Net S.r.l., FA 593321 (Nat Arb. Forum Jan. 2, 2006 ) (finding that the respondent’s use of the disputed domain name for a website holding page was insufficient to provide the respondent with rights or legitimate interests in that name); see also Edwin Company, Ltd. v. Fiorucci Furniture, FA 393032 (Nat. Arb. Forum Feb. 22, 2005) (“Despite posting a site at the [disputed] domain [name], Respondent has not convinced the Panel that it is anything more than a place holder…Ultimately, the Panel finds that Respondent is not making 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)”).
Respondent makes no claim that he, or any company he owns, is commonly known as either of the disputed domain names, so Policy ¶ 4(c)(ii) cannot be called upon to sustain a finding that Respondent has rights or legitimate interests in those names. Moreover, as discussed above, Respondent’s lack of use of the disputed domain names means that Policy ¶¶ 4(c)(i) and (iii) cannot avail Respondent in this regard either. Furthermore, despite Respondent’s urgings otherwise, the Panel declines to apply the holding in Freedomcard, supra, because in that case the panel found that there was no clear service mark registration notice available to the respondent – a circumstance not present in this case, as discussed more fully below.
Both Complainant and Respondent spend much energy arguing about whether the logo found on Respondent’s webpage is similar to Complainant’s company logo. The Panel agrees with Respondent that the logos are dissimilar, but that finding has no impact on the Panel’s determination that Respondent is making no legitimate use of the disputed domain names.
Respondent also raises the dubious suggestion that a finding in favor of Complainant on this issue is tantamount to declaring that, solely because Complainant has valid service mark rights in CITADEL, all domain names which incorporate the word, “citadel,” must therefore belong to Complainant – even with respect to other entities that have a registered trademark or service mark that includes that word. Such is not the case. Other entities might well have rights or legitimate interests in such domain names. The Panel’s conclusion in this case is only that, in this instance, Respondent is not among them.
In conclusion, the Panel determines that Respondent has failed to rebut Complainant’s prima facie case as outlined above.
As so reasoned, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant fails to contend that Respondent has registered and is using the disputed domain names in bad faith per any of the circumstances listed to support such a finding in Policy ¶ 4(b). However, it has been well established in prior UDRP rulings that those criteria are not exhaustive with respect to rationales for findings of bad faith registration and use of disputed domain names. See CytoSport Inc. v. MarketingExperts, Inc., D2008-1111 (WIPO Sept. 19, 2008) (“The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found.”); see also Bloomberg L.P. v. Future Movie Name, FA 139664 (Nat. Arb. Forum Feb. 8, 2003) (“…paragraph 4(b) is not an exhaustive list, and other circumstances may give rise to a finding of bad faith.”).
Complainant does assert that Respondent was aware of Complainant’s CITADEL mark rights prior to registrations of the disputed domain names and thus registered them in bad faith. Respondent claims that it did not possess such knowledge, arguing that Complainant does little or no business in Australia, Respondent’s domicile. To support his claim, Respondent cites a prior UDRP case, Maryland Univ. v. Nucom, D2002-0081 (WIPO Apr. 29, 2002). It that case, which Respondent contends is “directly on point,” the learned panel dismissed a finding of bad faith because: “The Panel cannot infer that a registrant in Scotland would know of the fame of the Complainant’s mark [registered in the United States] at the date of registration.” However, the Panel notes that in the very next sentence – somehow omitted from the emphasized paragraph citation presented by Respondent’s counsel – that panel states: “There are no trade or service registrations of the mark in the United Kingdom or the European Union.” Well, in this case, Complainant has provided concrete evidence that it does have registrations in Australia – Respondent’s domicile – for the CITADEL mark; registrations that pre-date the registration of disputed domain names by more than five years. Meanwhile, as pointed out by the astute counsel for Complainant, a prior Policy panelist determined that Complainant’s CITADEL mark has achieved a considerable degree of fame. See Citadel Investment Group v. Anthony N.Georgiuo, FA 1482483 (Nat. Arb. Forum Mar. 4, 2013). Given these circumstances, the Panel can and does infer that Respondent was aware of Complainant’s CITADEL mark prior to registration of the disputed domain names and then proceeded with such registration in bad faith.
With respect to use of the disputed domain names in bad faith, the Panel notes that previous Policy panels have found that passive or nonuse of a disputed domain name can constitute use in bad faith. See SF Investments, Inc. v. Jason Black, FA 1368326 (Nat. Arb. Forum Mar. 8, 2011) (“Respondent uses the disputed domain name to host an inactive website…The Panel finds that such passive holding of the disputed domain name constitutes bad faith use and registration under Policy ¶ 4(a)(iii).”); see also Intel Corp. v. Pentium Group, D2009-0273 (WIPO May 6, 2009) (“It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy”). The Panel finds itself in accord with such precedent, and concludes that, due to the notoriety of Complainant’s mark, Respondent’s passive use of the disputed domain names constitutes use in bad faith.
Accordingly, the Panel finds that Complainant has shown that the disputed domain names were registered and are being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firstcitadelmanagement.com> and <firstcitadelholdings.com> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: March 28, 2014
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