Citigroup Inc. v. Jin Ping Wen
Claim Number: FA1907001851001
Complainant is Citigroup Inc. (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is Jin Ping Wen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citigroupglobal.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 3, 2019; the Forum received payment on July 3, 2019.
On July 9, 2019, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <citigroupglobal.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 July 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@citigroupglobal.com. Also on July 15, 2019, 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 August 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 is an American multinational banking and financial services corporation with headquarters in New York, New York. Complainant has rights in the CITIGROUP mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,406,753, registered Nov. 21 2000). Respondent’s <citigroupglobal.com>[i] domain name is confusingly similar to Complainant’s CITIGROUP mark as Respondent adds the generic term “global” along with the “.com” generic top-level domain (gTLD).
2. Respondent has no rights or legitimate interests in the <citigroupglobal.com> domain name as Respondent is not commonly known by the domain name.
3. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name resolves to a website purporting to offer a variety of financial services.
4. Respondent registered and uses the <citigroupglobal.com> domain name in bad faith as the domain name resolves to a webpage that offers a variety of financial services that are identical or directly compete with Complainant.
5. Respondent also had knowledge of Complainant’s mark due to the international fame and notoriety of the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CITIGROUP mark. Respondent’s domain name is confusingly similar to Complainant’s CITIGROUP mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <citigroupglobal.com> domain name and that Respondent registered and uses the 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
PRELIMINARY ISSUE: FOREIGN LANGUAGE
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.”). Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been produced by Complainant to show the likelihood 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.
Complainant has rights in the CITIGROUP mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017). Complainant has provided the Panel with information pertaining to its USPTO registration for the CITIGROUP mark (e.g. Reg. No. 2,406,753, registered Nov. 21, 2000). Therefore, Complainant has rights in the CITIGROUP mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <citigroupglobal.com> domain name is confusingly similar to Complainant’s CITIGROUP mark as Respondent adds the generic term “global” along with the “.com” generic top-level domain (gTLD). Registration of a domain name that contains a wholly incorporated mark and adds a generic word and gTLD does not distinguish a domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Respondent’s <citigroupglobal.com> domain name is confusingly similar to Complainant’s CITIGROUP mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <citigroupglobal.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <citigroupglobal.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been given license or consent to use the CITIGROUP mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the a domain name incorporating that mark. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <citigroupglobal.com> domain name lists the registrant as “Jin Ping Wen” and there is no other evidence to suggest that Respondent was authorized to use the CITIGROUP mark or was commonly known by the <citigroupglobal.com> domain name. Therefore, the Panel holds that Respondent is not commonly known by the <citigroupglobal.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the <citigroupglobal.com> domain name resolves to a website purporting to offer a variety of financial services. Use of a domain name incorporating the mark of another to offer similar services to that party in attempt to confuse internet users is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s domain name’s resolving webpage that shows Chinese characters offering financial services as portrayed by the financial graphs. Therefore, the Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <citigroupglobal.com> domain name in bad faith as the domain name resolves to a webpage that offer a variety of financial services that are identical to, or compete with, services offered by Complainant. Use of a domain name which incorporates Complainant’s mark that offers competing or similar services to Complainant is evidence of bad faith registration and use per Policy ¶¶ 4(b)(iii) and/or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, Complainant has provided the Panel with a screenshot of Respondent’s domain name’s resolving webpage that shows Chinese characters offering financial services similar to those offered by Complainant. Therefore, the Panel holds that Respondent registered and uses the <citigroupglobal.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant further argues that Respondent had knowledge of Complainant’s mark due to the international fame and notoriety of the mark. Actual knowledge of Complainant’s rights in the CITIGROUP mark prior to registering the <citigroupglobal.com> domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Here, Complainant has provided sufficient evidence to show that its CITIGROUP mark is sufficiently well known such that it is reasonable to conclude that Respondent had knowledge of the mark when the <citigroupglobal.com> domain name was registered. Therefore, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the CITICONNECT mark which constitutes bad faith per Policy ¶ 4(a)(iii)
.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citigroupglobal.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: August 10, 2019
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