Citadel LLC and its related entity KCG IP Holdings LLC v Brian Johnson
Claim Number: FA1706001735427
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 Brian Johnson (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citadelglobalinvestments.com> and <citadelinternationalholdings.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 12, 2017; the Forum received payment on June 13, 2017.
On June 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citadelglobalinvestments.com> and <citadelinternationalholdings.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@citadelglobalinvestments.com, postmaster@citadelinternationalholdings.com. Also on June 14, 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 July 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is one of the world’s largest and most sophisticated alternative investment institutions. Complainant also is a leading market maker, provides liquidity and trade execution to retail and institutional clients, and it is a leader in investment management technology.
Complainant registered the CITADEL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,213,943, registered Feb. 27, 2007).
Respondent’s <citadelglobalinvestments.com> and <citadelinternationalholdings.com> domain names are confusingly similar to Complainant’s CITADEL mark because each of them contains the entire mark and appends either the descriptive terms “global investments” or “international holdings,” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <citadelglobalinvestments.com> and <citadelinternationalholdings.com> domain names. Respondent is not commonly known by the CITADEL mark, nor does Complainant sponsor Respondent. Respondent is not legitimately affiliated with Complainant in any way, nor has Complainant given Respondent permission to use the mark for any purpose. Respondent also fails to make a bona fide offering of goods or services with the domain names because Respondent fails to make an active use out of either disputed domain name.
Respondent registered and uses the <citadelglobalinvestments.com> and <citadelinternationalholdings.com> domain names in bad faith. Respondent has prior adverse decisions against it, and has demonstrated a pattern of bad faith registration and use of domain names incorporating well known marks. Respondent also fails to make an active use of the resolving webpage, as it currently and has always resolved to a webpage that materially lacks content. Finally, Respondent must have had actual or constructive knowledge of Complainant’s CITADEL mark because Complainant is a large, well known company all around the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CITADEL mark as evidenced by its registration of such mark with the USPTO.
Complainant’s rights in the CITADEL mark existed prior to Respondent’s registration of the at-issue domain names.
Respondent fails to make an active use out of either at-issue domain name.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for the CITADEL trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(I). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Respondent’s at-issue domain names each contain Complainant’s entire CITADEL trademark followed by either the suggestive terms “global investments” or the equally suggestive terms “international holdings.” Each domain name terminates with the top level domain name “.com”. The slight differences between the at-issue domain names and Complainant’s trademark are insufficient to differentiate either domain name from Complainant’s CITADEL mark for the purposes of the Policy. Therefore the Panel finds that Respondent’s <citadelglobalinvestments.com> and <citadelinternationalholdings.com> domain names are each confusingly similar to Complainant’s CITADEL trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); See Citadel Investment Group, L.L.C. v. Eli Rosenberg and Etro Holdings, LLC., FA0810001230838 (Forum Dec. 2, 2008) (“The Panel also notes that the added terms describe or relate to Complainant’s investment activities, and therefore the disputed domain names are not sufficiently distinguished from the mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Here, Respondent lacks both rights and legitimate interests in respect of each at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of either at‑issue domain name.
WHOIS information for the <citadelglobalinvestments.com> and <citadelinternationalholdings.com>domain names lists “Brian Johnson” as their registrant. There is no evidence before the Panel which otherwise suggests that Respondent is known by either at-issue domain and Respondent makes no claim that it is known by either domain name. Therefore, the Panel concludes that Respondent is not commonly known by either Respondent’s <citadelglobalinvestments.com> or Respondent’s <citadelinternationalholdings.com> domain name pursuant to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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.)
Respondent uses the confusingly similar <citadelglobalinvestments.com> and <citadelinternationalholdings.com> domain names to address a website that lacks content except for the message “website coming soon! Please check back to see if the site is available.” Using the <citadelglobalinvestments.com> and <citadelinternationalholdings.com>domain names in such manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below, multiples circumstances compel the Panel to conclude that Respondent acted in bad faith regarding each domain name pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent previously registered domain names incorporating well-known third party trademarks. Such registrations resulted in adverse UDRP decisions against Respondent. Respondent’s prior bad faith registrations suggests bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Additionally and as mentioned above, Respondent holds the at-issue domain names inactively. In the absence of evidence to the contrary, Respondent’s failure to actively use either domain name further indicates bad faith.
Finally, Respondent registered the <citadelglobalinvestments.com> and <citadelinternationalholdings.com> domain names with actual knowledge of Complainant’s CITADEL trademark. Respondent’s prior knowledge of Complainant’s mark is apparent from the mark’s notoriety and from Respondent’s inclusion of terms suggesting Complainant’s international investment oriented business in the at-issue trademark laden domain names. Respondent’s actual knowledge of Complainant’s rights in the CITADEL mark prior to its registering the <citadelglobalinvestments.com> and <citadelinternationalholdings.com> domain names further indicates that Respondent registered and used the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citadelglobalinvestments.com> and <citadelinternationalholdings.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 11, 2017
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