Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v. Vyacheslav Goshmanov
Claim Number: FA1812001821438
Complainant is Citadel Enterprise Americas LLC and its related
entity KCG IP Holdings LLC (“Complainant”), represented by Paul D. McGrady, Jr. of Winston & Strawn LLP, Illinois, USA. Respondent is Vyacheslav Goshmanov (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crypto-citadel.com> (“Domain Name”), registered with NameCheap, Inc..
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2018; the Forum received payment on December 17, 2018.
On December 17, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <crypto-citadel.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 15, 2019 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@crypto-citadel.com. Also on December 26, 2018, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel has reviewed the Complaint and considers that the evidence in the Complaint that Citadel Enterprise Americas LLC uses the CITADEL Mark under license from its related entity KCG IP Holdings LLC is sufficient to establish a sufficient nexus or link between the Complainants such that they should be treated as a single entity in this proceeding referred to in the singular, as “Complainant”.
A. Complainant
Complainant, Citadel Enterprise Americas LLC and KCG IP Holdings LLC, uses the CITADEL mark in connection with financial and investment services. Complainant has rights in the CITADEL mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,213,943, registered Feb. 27, 2007). Respondent’s <crypto-citadel.com> domain name is confusingly similar to Complainant’s CITADEL mark, as the domain name incorporates the entire CITADEL mark and adds only the generic term “crypto” and generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <crypto-citadel.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the CITADEL mark in any manner. Respondent’s use of a privacy shield further indicates that they are not commonly known by the CITDADEL mark.
Respondent registered and is using the <crypto-citadel.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to the associated website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent registered the Domain Name to rope consumers into private chat groups about CITADEL and crypto for a CITDAEL-branded cryptocurrency in order to disrupt Complainant’s business. Furthermore, Respondent’s use of a privacy service to conceal its identity is further evidence of bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the <crypto-citadel.com> domain name
B. Respondent
Respondent failed to submit a formal Response in this proceeding however Respondent did submit a short e-mail with procedural questions and the statement “I didn’t have a bad intention when registering a domain, and this site is intended for my YouTube channel and repeats the name of my channel.” While expressing an intention to provide further evidence to support the above statement not such additional evidence was ever provided.
Complainant having failed to establish bad faith registration and use of the domain name <crypto-citadel.com> has not established all required elements of its claim, and thus its complaint must be denied.
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).
Complainant has rights in the CITADEL mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,213,943, registered Feb. 27, 2007). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <crypto-citadel.com> Domain Name is confusingly similar to the CITADEL mark as it consists of the CITADEL mark, the descriptive word “crypto” and the “.com” gTLD. These changes are insufficient to distinguish the Domain Name from the CITADEL mark under Policy ¶ 4(a)(i). See PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant’s PADI mark: “the inclusion of the suggestive term “vacations” in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark since the term suggests Complainant’s travel related services.”); see also Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
The Domain Name consists of two generic words, “crypto”, meaning concealed or secret, and “citadel”, meaning fortress. The word crypto can, as noted in the Complaint, be an abbreviation for cryptocurrency, but there is no basis to conclude that, in the instant proceedings, it is used as an abbreviation for cryptocurrency, as opposed to its own meaning or as an abbreviation for the numerous other words that contain the “crypto” prefix .
Complaint operates a successful alternative investment business, but provides no evidence of mark rights or reputation in Ukraine, the location of the Respondent. Complainant does not establish that its CITIDEL mark is so well-known and ubiquitous that the Panel can conclude, for that reason alone, that Respondent’s registration of the Domain Name containing its CITADEL mark was motivated by awareness of Complainant (which would generally amount to bad faith registration), as opposed to registration of the Domain Name for its inherent meaning, namely “secret fortress” (which would generally not amount to bad faith registration). Nor does Complainant provide any evidence relating to the identity of Respondent, such as past dealings with Complainant, or connection with Complainant’s businesses, such that it would be reasonable to infer Respondent was aware of Complainant at the time of registration.
Therefore, in order to determine if Respondent’s registration of the Domain Name was motivated by awareness of Complainant or the inherent qualities of the words comprising the Domain Name, it is necessary to consider evidence of the Respondent’s Website. Respondent’s Website offers users the opportunity to participate in a private chat or private group in exchange for payment. Complainant asserts that that such private chat groups are for consumers to discuss Complainant, crypto currency, and potentially cryptocurrency branded with the CITIDEL Mark, however provides no evidence to support its entirely speculative assertions.
Rather Respondent’s Website makes no reference to Complainant, crypto currency or financial and investment services more generally. On its face, and in the absence of any other evidence, Respondent’s Website appears to offer paying users the opportunity to participate in some sort of secured chatroom. The term “crypto citadel” meaning “secret fortress” could well be an apt description of the services being provided, being a secure location for users to chat (in the absence of any evidence, the Panel will not speculate on the nature or subject-matter of the material inside Respondent’s secured chatroom).
Finally, there is no other evidence that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith). Respondent has not offered the Domain Name for sale, nor is there a basis for inferring such an intention. Respondent has not, on the basis of the evidence before the Panel, engaged in a pattern of conduct of registering domain names to prevent the owner of a mark for reflecting such a mark in a corresponding domain name. Respondent, which appears to offer private chatroom services, is not a competitor to Complainant’s investment services (Complainant’s claim that Respondent, is promoting cryptocurrency investment services in competition with Complainant is speculative). As discussed above, the Panel is not persuaded, on the balance of probabilities, that Respondent is using the Domain Name to take advantage of any confusion with Complaint’s CITIDEL mark, as opposed to the descriptive meaning of the words comprising a Domain Name.
The Uniform Domain Name Dispute Resolution Policy, is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable. ”). The Panel notes in the event that further information arises that suggests the motives of the Respondent in registering or using the Domain Name related to the Respondent’s awareness of the Complainant’s CITIDEL mark as opposed to the descriptive meaning of the words “crypto” and “citidel”, there may be grounds to consider a refiled complaint, subject to the applicable criteria.
As reasoned above, the Panel finds that Complainant has failed to prove that the Domain Name was registered and used in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <crypto-citadel.com> domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: January 20, 2019
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