Citigroup Inc. v. 陈帮财
Claim Number: FA1702001716398
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is 陈帮财 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.xin>, registered with Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn).
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2017; the Forum received payment on February 7, 2017.
On February 8, 2017, Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) confirmed by e-mail to the Forum that the <citi.xin> domain name is registered with Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) 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 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 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.xin. Also on February 10, 2017, 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 March 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. 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.xin> 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”) “.xin.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been authorized to use the CITI marks in any manner and Respondent’s domain does not reflect Respondent’s common name. Further, Respondent’s use of the domain name, to resolve to an inactive website, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compl., at Attached Ex. I. Further, the domain name previously resolved to an offer for sale. See id.
3. Respondent registered and used <citi.xin> in bad faith. First, Respondent has offered the domain name for sale to the general public, demonstrating bad faith under Policy ¶ 4(b)(i). Second, Respondent has a portfolio of domain names that presumably infringe on the rights of third parties, showing a bad faith pattern under Policy ¶ 4(b)(ii). See Compl., at Attached Ex. K (reverse WHOIS results). Complainant succeeded in a recent UDRP case for the transfer of <citi.xin>. See Citigroup Inc. v. 郭丕林, FA1602001660186 (Forum Mar. 31, 2016). However, due to the failure of the registrar obligated by ICANN to timely effectuate transfer and otherwise timely notify Complainant of the pending expiration, allowing a window of time for Respondent to register the domain name on December 12, 2016. See Compl., at ¶¶12–13. This demonstrates Respondent’s opportunistic bad faith. Further, Respondent had actual knowledge of Complainant when registering and using the domain name. Lastly, the inactive holding of the domain name after receipt of Complainant’s cease and desist letter provides additional evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent did not submit a Response in this Proceeding.
PANEL NOTE:
The Panel notes that 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 Chinese 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 demonstrate 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) exhibiting Respondent’s understanding of the Chinese 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 Chinese 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.”). Complainant requests that this proceeding, including the Panel’s determination, be conducted in English for the following reasons: (i) Respondent has targeted the English-language trademark reflected in the Disputed Domain Name; (ii) Respondent has targeted English-speaking Internet users on <citi.xin> by offering the domain for sale in both English and Chinese; (iii) Respondent has targeted TLDs rendered in ASCII characters including those reflected in the Disputed Domain Name; (iv) Respondent also owns other domain names reflecting English-language words at the Second Level and Top Level. Therefore, 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. Respondent’s <citi.xin> domain name is confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citi.xin> domain name.
3. Respondent registered or used the <citi.xin> 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(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.”).
Complainant claims to have rights in the CITI mark based on registration of the mark with the USPTO as well as other international trademark agencies (e.g., Reg. No. 1,181,467, registered Dec. 8, 1981). Panels routinely find—and this Panel does find—that a complainant has rights in a mark based on registration of the mark with the USPTO and other international trademark agencies. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Complainant next claims that Respondent’s domain name, <citi.xin>, 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 TLD “.xin.” Panels have held that the addition of a TLD is generally not sufficient to differentiate a domain name from the mark to which the term is attached. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds that Respondent’s domain name is confusingly similar to the CITI mark under Policy ¶ 4(a)(i).
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.”).
Complainant claims that Respondent has not been authorized to use the CITI marks in any manner and Respondent’s domain name does not reflect Respondent’s common name. WHOIS information associated with the domain name identifies Respondent as “陈帮财,” which does not appear to resemble the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain based on WHOIS information and a lack of authorization from a complainant. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel finds that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent’s use of the domain name, to resolve to an inactive website, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compl., at Attached Ex. I.
Further, the domain name previously resolved to an offer for sale. See Compl., at Attached Ex. I (“citi.xin正在出售中！citi.xin is for sale！”). Offers for sale may provide additional evidence of lacking rights or legitimate interests. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Accordingly, the Panel agrees that Respondent’s offer to sell the domain name indicates willingness to sell, providing additional evidence that Respondent lack rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and used <citi.xin> in bad faith. First, Complainant asserts Respondent has offered the domain name for sale to the general public, demonstrating bad faith under Policy ¶ 4(b)(i). General offers for sale can demonstrate bad faith 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).”). Accordingly, the Panel looks to Complainant’s Exhibit I and determines that the resolving message is sufficient basis to find Respondent registered the domain name in bad faith per Policy ¶ 4(b)(i).
Second, Complainant argues that Respondent has a portfolio of domain names that presumably infringe on the rights of third parties, showing a bad faith pattern under Policy ¶ 4(b)(ii). See Compl., at Attached Ex. K (reverse WHOIS results). Panels consider the facts surrounding each alleged pattern of domain registrations, and have traditionally seen bad faith findings 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)). Therefore, while the domains listed at Complainant’s Attached Exhibit K have not been involved in UDRP proceedings as of yet, and have therefore not been determined to have infringed the rights third parties may have in certain marks, the Panel chooses to decline to find bad faith under Policy ¶ 4(b)(ii).
Complainant claims it succeeded in a recent UDRP case for the transfer of <citi.xin>. See Citigroup Inc. v. 郭丕林, FA1602001660186 (Forum Mar. 31, 2016). However, due to the alleged failure of the registrar obligated by ICANN to timely effectuate transfer and otherwise timely notify Complainant of the pending expiration, a window of time was created for Respondent to register the domain name on December 12, 2016. See Compl., at ¶¶12–13. Opportunistic bad faith has been found in similar circumstances. See Gryphon Rue Rower-Upjohn v. Tyler Calfee, FA 1608001690408 (Forum Sept. 28, 2016) (finding that a domain was registered in bad faith where “a miscommunication with the registrar resulted in an inadvertent failure to renew registration of the domain” and the respondent promptly registered the domain name with knowledge of the complainant’s trademark rights); see also SwissINSO S.A. v. Whois Privacy Shield Services, FA 1410001585415 (Forum Dec. 2, 2014) (holding that the respondent had engaged in opportunistic bad faith when it registered the disputed domain name after it was not renewed due to an oversight). Accordingly, the Panel agrees that there was an inadvertent lapse in the registration of the domain by Complainant, and that the circumstances indicate that Respondent registered the domain name opportunistically in bad faith under Policy ¶ 4(a)(iii).
Further, 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 CITI mark. The Panel agrees with Complainant regarding Respondent's actual knowledge and concludes that Respondent registered the <citi.xin> domain name 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).").
Lastly, Complainant argues that the inactive holding of the domain name after receipt of Complainant’s cease and desist letter provides additional evidence of bad faith under Policy ¶ 4(a)(iii). While Respondent has allegedly inactively held the disputed domain since receipt of Complainant’s cease and desist letter, the Panel agrees that it has done so in bad faith under Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
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.xin> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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