Citigroup Inc. v. Hulmiho Ukolen / Poste restante
Claim Number: FA1612001707737
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citibankcredit.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2016; the Forum received payment on December 15, 2016.
On December 16, 2016, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the Forum that the <citibankcredit.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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@citibankcredit.com. 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 The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is an American multinational banking services corporation headquartered in New York, New York. Complainant has registered the CITIBANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 691,815, registered Jan. 19, 1960), which demonstrates Complainant’s rights in the mark. See Compl., at Attached Ex. C. Respondent’s <citibankcredit.com> incorporates the mark entirely while only adding the descriptive term “credit” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <citibankcredit.com>. The domain name does not reflect Respondent’s name, so Respondent cannot be considered commonly known by the domain name. Further, the domain name diverts Internet users to websites unrelated to Complainant’s business, which does not represent any bona fide offering or legitimate noncommercial or fair use.
Respondent registered and used <citibankcredit.com> in bad faith. Respondent offers the domain for sale on <afternic.com> for $4,750.00, demonstrating bad faith under Policy ¶ 4(b)(i). See Compl., at Attached Ex. K. Next, 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. L. Further, while the domain name resolves to a Fidelity Investments webpage offering competing stock trading services and brokerage accounts, Respondent has engaged in bad faith per Policy ¶ 4(b)(iii). While Respondent redirects Internet users to commercial websites via click-through hyperlinks, Respondent presumably commercially profits in bad faith pursuant to Policy ¶ 4(b)(iv). Lastly, Respondent had actual knowledge of the CITIBANK mark and Complainant’s rights therein when registering/using the domain name because of the fame associated with the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceeding
Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Finnish language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) demonstrating Respondent’s understanding of the Finnish language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Finnish language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, Complainant argues that Respondent is competent to proceed in English based on the following:
(i) Respondent has targeted an English-language trademark which is reflected in the Disputed Domain Name;
(ii) Respondent has included an additional English-language word, “credit,” in the Disputed Domain Name;
(iii) Respondent has targeted an English-language TLD rendered in ASCII characters as reflected in the Disputed Domain Name;
(iv) Respondent owns or has owned a portfolio of several other domain names that contain English-language words and/or trademarks and/or typographical variations of such words or trademarks at the second level; and
(v) Respondent owns or has owned a portfolio of several other domain names in English-language TLDs rendered in ASCII characters.
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.
1. Complainant is a United States company engaged in the provision of multinational banking services.
2. Complainant has established its trademark rights in the CITIBANK mark by virtue of its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 691,815, registered Jan. 19, 1960).
3. Respondent registered the <citibankcredit.com> domain name on October 1, 2015.
4. The domain name diverts Internet users to websites unrelated to Complainant’s business.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has registered the CITIBANK mark with USPTO (e.g., Reg. No. 691,815, registered Jan. 19, 1960), which demonstrates Complainant’s rights in the mark. See Compl., at Attached Ex. C. USPTO registrations are sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Accordingly, the Panel concludes that Complainant has established its rights in the CITIBANK mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CITIBANK mark. Complainant also argues that Respondent’s <citibankcredit.com> incorporates the mark entirely while only adding the descriptive word “credit” and the “.com” gTLD. Where a respondent has added the term “credit,” confusing similarity has been found. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Further, the “.com” suffix is irrelevant. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel finds that the changes Respondent has appended to Complainant’s fully incorporated CITIBANK mark do not distinguish the domain name from the mark for the purposes of Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CITIBANK mark and to use it in its domain name, adding only the generic word “credit” which conveys the meaning that the domain name is an official domain name of Complainant dealing with its credit business which it is not;
(b) Respondent registered the disputed domain name on October 1, 2015;
(c) Respondent has used the domain name to divert Internet users to websites unrelated to Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in <citibankcredit.com>. In so arguing, Complainant begins by noting that the domain name does not reflect Respondent’s name, so Respondent cannot be considered commonly known by the domain name. WHOIS information has been relied upon where a respondent has failed to submit a response. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS here lists “Hulmiho Ukolen” and thus the Panel finds that Respondent is not commonly known by <citibankcredit.com>;
(f) Further, Complainant argues and shows by persuasive evidence that the domain name diverts Internet users to websites unrelated to Complainant’s business, which does not represent a bona fide offering or legitimate noncommercial or fair use. Where diversion to unrelated (or related) businesses occurs, no rights or legitimate interests may exist. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (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). The Panel notes Exhibit H, which purportedly displays several different resolving pages connected to the domain name. The Panel finds that the varied resolving websites show that Respondent has no rights or legitimate interests in the domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and used the <citibankcredit.com> domain name in bad faith. Complainant submits that Respondent offers the domain name for sale on <afternic.com> for $4,750.00, demonstrating bad faith under Policy ¶ 4(b)(i). See Compl., at Attached Ex. K. Offering a domain name for sale on a public auction site may, depending on the evidence, impute bad faith in a respondent under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Under the circumstances of this dispute, the Panel finds that listing <citibankcredit.com> for sale on a public auction site for $4,750.00 represents a bad faith attempt to sell the domain name for in excess of out-of-pocket costs pursuant to Policy ¶ 4(b)(i).
Secondly, Complainant urges that Respondent has an established pattern of bad faith domain registrations. In support of this point, Complainant in a detailed submission provides WHOIS results constituting Respondent’s alleged domain name portfolio, which include registrations of domain names that presumably infringe on the trademark rights of third parties. See Compl., at Attached Ex. L. Such evidence may not always establish bad faith, but in the facts of the present case, it shows that in regard to the conduct of Respondent, it is part of its modus operandi and assists the Panel in finding, as it does, bad faith under Policy ¶ 4(b)(ii).
Thirdly, as the domain name resolves to a Fidelity Investments webpage offering competing stock trading services and brokerage accounts (see Compl., at Attached Ex. H), Complainant argues and shows by persuasive evidence that Respondent has engaged in bad faith per Policy ¶ 4(b)(iii). Redirection to a competing website can lead to such a finding. See Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Here, the Panel agrees that the facts are analogous to those in Am. Online, Inc. and that Respondent’s redirection to Complainant’s competitors demonstrates bad faith pursuant to Policy ¶ 4(b)(iii).
Fourthly, as Respondent redirects Internet users to commercial websites via click-through hyperlinks, Complainant contends that Respondent presumably commercially profits in bad faith pursuant to Policy ¶ 4(b)(iv). Where redirection occurs, commercial gain can be presumed. See Kmart v. Khan, FA 127708 (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)). The Panel finds that Complainant has provided sufficient evidence that Respondent redirects Internet users to various third party websites and that commercial gain is presumed from such redirection. Therefore, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to the language of Policy ¶ 4(b)(iv).
Fifthly, because of the global fame of Complainant’s mark, Complainant argues that it is clear that Respondent registered the domain with actual knowledge of the CITIBANK mark. The Panel agrees with Complainant regarding Respondent's actual knowledge and concludes that Respondent registered <citibankcredit.com> in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the CITIBANK mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used the
disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citibankcredit.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 20, 2017
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