Citadel LLC and its related entity, KCG IP Holdings, LLC v. Peter Kearney a/k/a EU Affiliates Ltd
Claim Number: FA1402001544149
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 Peter Kearney a/k/a EU Affiliates Ltd (“Respondent”), Malta.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firstcitadelinvestments.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.
Bruce E. Meyerson 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 25, 2014, Eurodns S.A. confirmed by e-mail to the National Arbitration Forum that the <firstcitadelinvestments.com> domain name is registered with Eurodns S.A. and that Respondent is the current registrant of the name. 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 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 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@firstcitadelinvestments.com. Also on February 26, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. 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
i. Complainant, Citadel LLC and its related entity, KCG IP Holdings, LLC, have grown into one of the world’s largest and most sophisticated alternative investment institutions. Complainant employs more than one thousand professionals worldwide and has offices worldwide.
ii. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the CITADEL mark (Reg. No. 3,213,943, registered February 27, 2007).
iii. The offending domain name is confusingly similar to Complainant’s mark because it fully incorporates Complainant’s CITADEL mark in its entirety with the additions of the generic terms “first” and “investments” and the generic top-level domain (“gTLD”) “.com.”
iv. Respondent has no rights or legitimate interests in the offending domain name.
v. Respondent is not commonly known by the disputed domain name.
vi. The offending domain name currently resolves to an advertising pay-per-click webpage containing various links to financial services, some of which are direct competitors of Complainant.
vii. Respondent registered and is using the offending domain name in bad faith.
viii. Respondent’s use of the offending domain name to advertise links to related products is disruptive to Complainant’s business.
ix. Respondent is using the offending domain name to promote third-party links unrelated to Complainant in order to profit from click-through fees.
x. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CITADEL mark.
xi. Respondent registered the <firstcitadelinvestments.com> domain name on February 28, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CITADEL mark. Respondent’s domain name is confusingly similar to Complainant’s CITADEL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <firstcitadelinvestments.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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.
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.”).
Complainant owns a trademark registration with the USPTO for the CITADEL mark (Reg. No. 3,213,943, registered February 27, 2007). Respondent appears to reside in Malta. However, Policy ¶ 4(a)(i) does not require that to establish rights in a mark, the mark must be registered in the country where a respondent resides. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). Thus, Complainant’s registration of the CITADEL mark with the USPTO establishes rights in the mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <firstcitadelinvestments.com> domain name is confusingly similar to Complainant’s mark because the domain fully incorporates Complainant’s CITADEL mark in its entirety with the additions of the generic terms “first” and “investments” and the gTLD “.com.” Under Policy ¶ 4(a)(i) the addition of one or more generic words does not distinguish Respondent’s domain name from Complainant’s mark. See OS Asset, Inc. v. Yan / Yanli Li; Zhichao Yang, FA 1529354 (Nat. Arb. Forum Dec. 30, 2013) (finding that the use of Complainant’s entire mark with the addition of generic terms such as “online,” “ordering,” “order,” did not negate any confusing similarity between the disputed domain names and Complainant’s mark). Also, Respondent’s addition of a gTLD is insufficient to differentiate the domain name from the mark according to Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Accordingly, the Panel finds that Respondent’s <firstcitadelinvestments.com> domain name is confusingly similar to Complainant’s CITADEL mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the <firstcitadelinvestments.com> domain name. Complainant states that the WHOIS information identified Respondent as “Peter Kearney a/k/a EU Affiliates Ltd.” Complainant alleges that Respondent has never used any mark or service mark similar to the disputed domain name by which it may have come to be known, other than the disputed domain name used in the present case. In addition, Complainant argues that it has not granted Respondent any license, permission, or authorization by which Respondent could own or use any domain name registrations which are similar to Complainant’s mark. Therefore, the Panel finds that, based on the evidence provided, Respondent has not been commonly known under the <firstcitadelinvestments.com> domain name according to Policy ¶ 4(c)(ii). See Guardian News & Media Limited v. D-Max Limited, FA 1514364 (Nat. Arb. Forum Sept. 23, 2013) (finding that Respondent had not established rights or legitimate interests to the disputed domain name where Respondent lacked permission to use Complainant’s mark and the evidence in the WHOIS information showed Respondent is known by a different name).
Complainant has shown that Respondent’s <firstcitadelinvestments.com> domain name currently resolves to an advertising pay-per-click webpage containing various links to financial services, some of which are direct competitors of Complainant. Respondent’s domain name resolves to a website stating “Related Links” and featuring competing links titled “Business Consulting Firms,” “Financial Consultants,” “Online Marketing Consultant,” and others. Such use of a domain name to provide competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Metropolitan Life Ins. Co. v. Robert Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (ordering transfer of <metropolitanlife.us> based in part upon a finding that using the domain name in conjunction with a pay-per-click advertising scheme “is diverting Internet users for commercial gain and that such use does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(ii)” or a legitimate noncommercial or fair use of the disputed domain name). Thus, the Panel concludes that Respondent’s use of the <firstcitadelinvestments.com> domain name does not show a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s use of the <firstcitadelinvestments.com> domain name to advertise links to related products is disruptive to Complainant’s business. Respondent’s disputed domain name links to a webpage that provides hyperlinks to other investment institutions. The Panel infers that Respondent’s use of the disputed domain name is disruptive to Complainant’s business because of the competitive nature of the hyperlinks provided, and therefore the Panel finds that Respondent has registered and is using the <firstcitadelinvestments.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See John Hancock Life Ins. Co. (U.S.A.) v. Rakshita Mercantile Private Ltd., FA 1491155 (finding evidence of bad faith use and registration under Policy ¶4(b)(iii) where offending domain name <johnhancockinvestments.com> disrupted Complainant’s business by providing competing links).
Complainant claims that Respondent is using the <firstcitadelinvestments.com> domain name to promote third-party links unrelated to Complainant in order to profit from click-through fees. Respondent is using the disputed domain name to provide competing hyperlinks titled “Seo Consultancy,” “Internet Video Converter,” “Business Consulting Firms,” and more. In State Farm Mutual Auto. Ins. Co. v. ICS INC., FA 1532398 (Nat. Arb. Forum Dec. 31, 2013), the panel found that respondent registered and used the offending domain name in bad faith under Policy ¶ 4(b)(iv) because the disputed domain name resolved to a website featuring unrelated third-party links from which respondent received click-through revenue. Consequently, because the Panel finds that Respondent is using the <firstcitadelinvestments.com> domain name to provide competing links to commercially gain from click-through fees, the Panel holds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <firstcitadelinvestments.com> domain name with actual knowledge of Complainant’s rights in the CITADEL marks. Complainant claims that given the considerable use of the CITADEL marks, Respondent knew or should have known of such marks at all relevant times. Complainant asserts that even if Respondent argues that it was somehow unaware of Complainant’s rights in the CITADEL mark, if Respondent had conducted a preliminary trademark search, it would have found Complainant’s various trademark registrations for the CITADEL mark and the websites associated with the mark. Based upon this record, the Panel may finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firstcitadelinvestments.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 31, 2014
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