Citigroup Inc. v. Juan Franco
Claim Number: FA2010001917535
Complainant is Citigroup Inc. (“Complainant”), represented by James L. Vana of Perkins Coie LLP, District of Columbia, USA. Respondent is Juan Franco (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gfcitibank.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2020; the Forum received payment on October 19, 2020.
On October 20, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gfcitibank.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2020 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@gfcitibank.com. Also on October 23, 2020, 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 November 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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
Complainant claims rights in the CITI and CITIBANK trademarks acquired through its ownership of its large portfolio of trademark and service mark registrations described below as well as the goodwill that it has established in the marks by extensive use in its international banking and financial services business.
Since it was founded in New York in 1812 it has grown become 13th largest bank holding company in the world as measured by assets and the 7th largest as measured by market capitalization.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s CITI and CITIBANK trademarks as it fully incorporates both and is only differentiated by the addition of the letters “gf” and the generic top level domain (“gTLD”) extension <.com>.
Complainant submits that the letters “gf” are a common abbreviation for “grupo finaciero” or “financial group” and Respondent’s website confirms that this is the intended meaning.
Complainant argues that both the letters “gf” and the term “bank” in the disputed domain name <gfcitibank.com> are generic and descriptive of Complainant’s services and the type of business that Respondent purports to be engaged in. Complainant refers to a print-out of the website to which the disputed domain name resolves which, it argues, confirms this is the intended meaning. Complainant submits that if anything, therefore, the addition of these terms only increases the likelihood of confusion. See Crédit industriel et commercial S.A. v. Registration Private, Domains By Proxy, LLC, D2016-2447 (WIPO January 23, 2017) (“[T]he addition of the term ‘bank’ which describes the core activity of the Complainant is not enough to avoid confusion, quite to the contrary. . . . UDRP decisions [hold that] . . . such an addition even strengthens the likelihood of confusion.”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, Complainant’s CITI or CITIBANK trademark or any variation thereof. Respondent has attempted to mask its identity behind a proxy service which is evidence that Respondent is not commonly known by the disputed domain name. See Wikimedia Found., Inc. v. Domain Admin, Privacy Protect. Serv., Inc., D2016-2586 (WIPO 2016) (“Given Respondent's attempt to mask his or her identity behind a privacy protection service, the Panel should presume that Respondent is not commonly known by the disputed domain names.”).
Complainant adds that Respondent is not a licensee or authorized user of its CITI or CITIBANK marks. Citing Navistar Int’l Corp. v. Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Referring to the abovementioned screenshot of the website to which the disputed domain name resolves, Complainant alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a website purporting to offer financial services under the name “Grupo Financiero Citibank.” This deliberate attempt to pass itself off as an affiliate of Complainant and/or capitalize on Complainant’s reputation and goodwill is not a legitimate use. Citing Instagram, LLC v. Jane Dew, D2019-0708 (WIPO May 3, 2019) (Respondent could not establish use of the mark in connection with a bona fide offering of goods where “Respondent was attempting to capitalize on the Complainant’s reputation and goodwill” and “cannot conceivably assert that she is commonly known by the Complainant’s trademark, given the Complainant’s notoriety and the fact that INSTAGRAM is a distinctive trademark exclusively associated with the Complainant.”).
Complainant alleges that the disputed domain name was registered and is being used in bad faith arguing that Respondent’s use of the CITI mark despite his knowledge of Complainant’s rights is evidence of bad faith use of the disputed domain name. See Delta Air Lines v. Blazek, D2009-1172 (WIPO 2009) (“[T]he very use of such a famous trademark as DELTA without any permission shows bad faith by itself.”)
Further, Complainant submits that Respondent has offered competing services on the website that prominently displays the CITI mark and argues that this demonstrates that Respondent is using the disputed domain name to confuse users into believing that it is Complainant or is otherwise affiliated or associated with Complainant, which is further evidence of bad faith use under Policy ¶ 4(b)(iv). Citing Verisign, Inc. v. jumbo domains, D2006-1582 (WIPO Mar. 1, 2007) (finding bad faith registration and use where “[r]espondent is using the [d]isputed [d]omain [n]ame to redirect visitors to a website that offers products and services that are competitive with those offered by Complainant”);
B. Respondent
Respondent failed to submit a Response in this proceeding.
· Complainant is an American multinational banking and financial services corporation. It uses and has trademark registrations for a portfolio of its CITI and CITIBANK trademarks and other trademark formed incorporating element CITI, including;
· United States registered trademark CITI (stylized), registration number 2,424,088, registered on the Principal Register on January 23, 2001 for goods and services in international classes 9, 35 and 36.
· United States registered service mark CITI, registration number 3,086,206, registered on the Principal Register on April 25, 2006 for services in international classes 35 and 36;
· United States registered service mark CITI, registration number 691,815 registered on the Principal Register on January 19, 1964 services in U.S. class 102;
· United States registered service mark CITI, registration number 1,181,467, registered on the Principal Register on December 8, 1981 for services in international class 36;
· United States registered service mark CITIBANKING, registration number 1,284,589, registered on the Principal Register on July 3, 1984 for services in international class 36;
· Colombia registered trademark CITI (stylized), registration number 228488, registered on April 29, 1999 for services in class 36;
· Colombia registered trademark CITI, registration number146900, registered on October 23, 1992 for services in class 36.
Complainant has established Internet presence maintaining websites to which its domain names <citi.com> and <citibank.com> resolve.
The disputed domain name <gfcitibank.com> was registered on July 12, 2020 and resolves to a website purporting to provide financial services in the Spanish language.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request from the Forum for verification of the registration details of the disputed domain name. The Registrar disclosed identity of Respondent who had availed all our privacy service to conceal his identity on the published WhoIs.
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”).
Complainant has adduced clear and convincing, uncontested evidence of it rights in the CITI and CITIBANK trademarks acquired through its ownership of its portfolio of trademark and service mark registrations described above and the goodwill that it has established in the marks by extensive use in its international banking and financial services business, since it was founded in New York in 1812 growing to become 13th largest bank holding company in the world as measured by assets and the 7th largest as measured by market capitalization.
The disputed domain name consists of both of Complainant’s CITI and CITIBANK trademarks with the letters “gf” as a prefix, in combination with the generic top level domain (“gTLD”) extension <.com>.
Complainant trademarks are the dominant elements of the disputed domain name and a CITI trademark is it only distinctive element. As appears from the evidence adduced the letters “gf” are an acronym for the Spanish-language term “grupo finaciero” or “financial group” and Respondent’s website confirms that this is the intended meaning.
In context therefore the letters “gf” provide no distinguishing character to the disputed domain name and for the purposes of evaluating confusing similarity the gTLD <.com> extension may be ignored in the circumstances of this Complaint because as a top level domain extension, it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademarks CITI and CITIBANK in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging
· that Respondent is not commonly known by the disputed domain name, Complainant’s CITI or CITIBANK trademark or any variation thereof;
· that Respondent has attempted to mask its identity behind a proxy service which is evidence that Respondent is not commonly known by the disputed domain name;
· that Respondent is not a licensee or authorized user of its CITI or CITIBANK marks;
· that the screenshot of the website to which the disputed domain name resolves, proves that Respondent is using the disputed domain name purporting to offer financial services under the name “Grupo Financiero Citibank” which are competing with Complainant’s offerings;
· that Respondent is engaged in a deliberate attempt to pass itself off as an affiliate of Complainant and/or capitalize on Complainant’s reputation and goodwill is not a legitimate use or a bona fide offering of goods or services.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has long and established international reputation in the use of the CITI and CITIBANK marks. It is more than improbable the disputed domain name was registered without actual knowledge of Complainant’s name, mark and websites. This Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered in bad faith in order to take predatory advantage of Complainant’s goodwill and reputation in the CITI and CITIBANK marks.
The evidence adduced by Complainant in the form of a screenshot of the website which the disputed domain name resolves fully supports Complainant’s assertion that Respondent is using the disputed domain name to host the website that purports to deceive the public and pass itself off as being hosted by or associated with Complainant and its business. The website states that it is hosted by “Grupo Financiero Citibank” and states “Somas una entidad fianciera dedicada a la prestacion de creditos de libre inverson para personas idependientes, empleadas y pensionadas” and there is no indication that Respondent has no association with Complainant.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in bad faith by engaging in an intentional attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's CITI and CITIBANK marks as to the source, sponsorship ,affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gfcitibank.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC, Panelist
Dated: November 16, 2020
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