Citigroup Inc. v. skibyonline Tech / skibyonline NG / skibyonline Nigeria
Claim Number: FA1709001748001
Complainant is Citigroup Inc. (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is skibyonline Tech / skibyonline NG / skibyonline Nigeria (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The two domain names here at issue are <citibinvestors.com> and <citiinvestorsbank.com>, both of which are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 7, 2017; the Forum received payment on September 7, 2017.
On September 9, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <citibinvestors.com> and <citiinvestorsbank.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 September 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@citibinvestors.com, and postmaster@citiinvestorsbank.com. Also on September 13, 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 October 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a banking and financial services corporation with branches in countries worldwide, including Nigeria, the residence of Respondent.
Complainant holds a registration for the CITI service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,181,467 (registered December 8, 1981).
Respondent registered the domain name <citiinvestorsbank.com> on April 11, 2017 and domain name <citibinvestors.com> on May 5, 2017.
The domain names are both confusingly similar to Complainant’s CITI mark.
Respondent has not been commonly known by either of the domain names.
Respondent is not making a bona fide offering of goods or services by means of the domain names or a legitimate noncommercial or fair use of either of them.
Respondent has used the domain names as part of a “phishing” scheme to obtain sensitive customer information from unsuspecting Internet users.
The website resolving from the domain names has contained a declaration claiming that that site was owned and operated by Complainant, as well as a recitation that:
At citibank.com, we understand your world can be a busy place. That’s why we deliver smart, award-winning, user-friendly online banking experience you can use for nearly all your banking needs. We know you have other things to do, so we make banking easier . . . Citibank.
The domain names now resolve to inactive websites.
Respondent has no right to or legitimate interest in either of the domain names.
Respondent knew of Complainant and its rights in the CITI mark when it registered the domain names.
Respondent has registered and used the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the CITI service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging, under Policy ¶ 4(a)(i), a UDRP complainant’s rights in a mark where it had registered the mark with the United States Patent and Trademark Office).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Nigeria). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s challenged <citibinvestors.com> and <citiinvestorsbank.com> domain names are confusingly similar to Complainant’s the CITI service mark. Each of the domain names contains the CITI mark in its entirety, together with generic terms describing aspects of Complainant’s business and the generic Top Level Domain (“gTLD”) “.com.” And one of the domain names contains an extraneous letter “b,” as in “bank.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that a respondent failed to differentiate the <aimprofiles.com> domain name from UDRP complainant’s AIM mark by merely adding the term “profiles”). See also Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017):
The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.
Likewise, adding to the mark of a UDRP complainant a generic term relating to the business of that mark holder in creating a domain name is unavailing as a device for avoiding a finding of confusing similarity under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution September 22, 2000) (finding confusing similarity where a respondent’s domain name combined a UDRP complainant’s mark with a generic term that had an obvious relationship to that complainant’s business). Further on the point, see Brown & Bigelow, Inc. v. Rodela, FA 96466 (Forum March 5, 2001) (finding that the domain name <hoylecasino.net> was confusingly similar to the HOYLE mark of a UDRP complainant, and that adding “casino,” a generic term describing the business of that complainant, did not take the domain name out of the realm of confusing similarity).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by either of the domain names <citibinvestors.com> or <citiinvestorsbank.com>, and that Complainant has not licensed or otherwise authorized Respondent to use its CITI mark in any domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Skibyonline Tech,” “skibyonline NG,” and “skybyonline Nigeria,” none of which resembles either of the domain names. On this record, we conclude that Respondent has not been commonly known by either of the contested domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum August 16, 2017) (finding, under Policy ¶ 4(c)(ii), that a respondent had no rights to or legitimate interests in disputed domain names where the relevant WHOIS information was unrelated both to the domain names and to that respondent’s use of them).
We next observe that Complainant contends, without objection from Respondent, that Respondent has not made either a bona fide offering of goods or services by means of the domain names or a legitimate noncommercial or fair use of them. Rather, Complainant asserts that Respondent has employed the domain names as part of a phishing scheme to obtain sensitive personal information from unsuspecting Internet users, and that the domain names now resolve to inactive websites. On the uncontested facts presented, we agree that Respondent’s use of the domain names is neither a bona fide offering of goods or services by means of them under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum August 16, 2017) (finding that a respondent lacked rights to and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). As to Respondent’s current inactive use of the domain names, see Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum August 3, 2017):
When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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). As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain [name]).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has employed the disputed <citibinvestors.com> and <citiinvestorsbank.com> domain names to attempt to pass itself off as Complainant on line with the aim of inducing unsuspecting internet users to part with their sensitive personal information in a fraudulent scheme commonly known as “phishing.” Under Policy ¶ 4(b)(iv), such a use of the domain names demonstrates Respondent’s bad faith in registering and using them. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using a disputed domain name to pass itself off as a UDRP complainant in a phishing scheme is evidence of bad faith registration and use).
As to Respondent’s current inactive use of the domain names, in the circumstances here presented, this, too, evidences Respondent’s bad faith registration and use of them. 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).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the CITI mark when Respondent registered the <citibinvestors.com> and <citiinvestorsbank.com> domain names. This further demonstrates Respondent’s bad faith in registering them. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [and therefore bad faith registration] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <citibinvestors.com> and <citiinvestorsbank.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 16, 2017
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