Citigroup Inc. v. Gao Fei
Claim Number: FA1612001707544
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Gao Fei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.red>, registered with West263 International Limited.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2016; the Forum received payment on December 14, 2016.
On December 18, 2016, West263 International Limited confirmed by e-mail to the Forum that the <citi.red> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 December 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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@citi.red. Also on December 20, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant, Citigroup Inc., is a banking and financial services corporation based in New York City in operation since 1812 and was the fourteenth largest bank holding company in the world by assets and seventh largest by market capitalization in 2014. Complainant uses the CITI mark in connection with its business in the financial services industry and has rights in the mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) as well as other international trademark agencies (e.g., Reg. No. 1,181,467, registered Dec. 8, 1981). Respondent’s <citi.red> is identical or confusingly similar to the CITI mark as the domain name includes the entire mark and merely differs through the addition of the top-level domain (“TLD”) “.red.”
Respondent has no rights or legitimate interests in <citi.red>. The domain name does not reflect Respondent’s name, so Respondent cannot be considered commonly known by the domain name. Further, the domain name has never provided any substantive content of its own that would confer any rights.
Respondent registered and used <citi.red> in bad faith. Respondent owns several domain names that incorporate the marks of third parties, showing bad faith under Policy ¶ 4(b)(ii). See Compl., at Attached Ex. K. The fame of Complainant’s mark and the good will associated with it given its fame creates value, which suggests this is why Respondent has inactively held the domain for a year.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered on <citi.red> on January 17, 2016.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that the Respondent has no rights or legitimate interests in or to the disputed domain name; and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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(f), 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 (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.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark, CITI. Complainant has adequately plead it rights and interests in and to the trademark. Respondent arrives at the disputed domain name by merely appending “.red” to the end of Complainant’s trademark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. The WHOIS information lists “Gao Fei” as registrant, therefore Respondent is not commonly known by <citi.red>.
The Panel also finds that the disputed domain name has never provided any substantive content of its own that would confer any rights. Where a respondent failed to use a domain name for a protracted period of time, no rights or legitimate interests may exist. See Hewlett-Packard Co. v. Shemesh, FA 434145 (FORUM Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides Exhibit H, which displays several screenshots throughout the timeline of Respondent’s possession of the domain—each screenshot displaying a similar error message. Therefore, the Panel finds that Respondent has failed to actively use the disputed domain name.
Therefore, the Panel finds that Respondent has no rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
Finally, the Panel finds that Respondent registered and used <citi.red> in bad faith. Allegedly, Respondent has an established pattern of bad faith domain registrations. Complainant provides WHOIS pages consisting of Respondent’s alleged domain name portfolio, which includes registrations of domain names that presumably infringe on the trademark rights of third parties. See Compl., at Attached Ex. K. Panels consider the facts surrounding each alleged pattern of abusive domain name registrations, and have traditionally found bad faith in prior UDRP decisions or registration of multiple domains in the same dispute as evidence of Policy ¶ 4(b)(ii) bad faith. See Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. PPA Media Services / Ryan G Foo, FA1307001510619 (FORUM Oct. 9, 2013) (finding that the respondent’s negative involvement in at least three prior UDRP proceedings and the respondent’s registration of twenty-four domain names in the instant proceeding demonstrated a pattern and practice of bad faith domain name registration pursuant to Policy ¶ 4(b)(ii)). As such, the Panel declines to find a pattern of bad faith domain name filings here because the domain names identified in Complainant’s Attached Exhibit K have not been involved in UDRP proceedings as of yet, and have therefore not been determined to infringe the rights of third parties. Therefore, the Panel declines to find bad faith under Policy ¶ 4(b)(ii).
Complainant’s rights in the CITI Marks are well established, and its CITI
brand has achieved a level of recognition and fame such that Respondent has no colorable argument that he is unaware of the CITI brand. The disputed
domain name is only valuable because of its association with the CITI brand. In
this context, Respondent’s passive holding of the Disputed Domain Name
evidences bad faith registration and use. As such, the Panel finds that Respondent has engaged in bad faith use and registration.
The Panel finally finds that Respondent had prior knowledge of Complainants rights and interests in and to the trademark CITI before it registered the disputed domain name. Complainant’s trademark is world famous. As such, under the totality of the circumstances, the Panel finds that Respondent knew of Complainant’s prior rights.
As such, the Panel finds that has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <citi.red> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: January 20, 2017
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