Citigroup Inc. v. Ling Shun Shing
Claim
Number: FA0503000436895
Complainant is Citigroup Inc. (“Complainant”), represented
by Bruce Goldner, of Skadden, Arps, Slate, Meagher and Flom LLP, Four Times Square, New York, NY 10036. Respondent is Ling Shun
Shing (“Respondent”), 138 Yi Xue
Yuan Road, Shanghai, null, 200032, CN.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <citibankcreditcard.com>, <citibusinesscard.com>,
and <citifinanical.com>, registered with Iholdings.com, Inc. d/b/a
Dotregistrar.com, Nameki.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 10, 2005.
On
March 10, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com, Nameki confirmed by
e-mail to the National Arbitration Forum that the domain names <citibusinesscard.com> and <citifinanical.com> are
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com, Nameki and that
Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a
Dotregistrar.com, Nameki has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com, Nameki registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 11, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com, Nameki confirmed by
e-mail to the National Arbitration Forum that the domain name <citibankcreditcard.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com, Nameki and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com, Nameki has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com, Nameki registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 31, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@citibankcreditcard.com, postmaster@citibusinesscard.com,
and postmaster@citifinanical.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Crary
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the "Panel")
finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <citibankcreditcard.com>,
<citibusinesscard.com>, and <citifinanical.com>
domain names are confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or
legitimate interests in the <citibankcreditcard.com>, <citibusinesscard.com>,
and <citifinanical.com> domain names.
3. Respondent registered and used the <citibankcreditcard.com>,
<citibusinesscard.com>, and <citifinanical.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Citigroup Inc., is in the business of providing financial services, including
consumer and commercial lending, credit card services, investment and advisory
services, real estate services and venture capital services, banking services
and numerous other services. Through its wholly owned subsidiaries, Citicorp
and Citibank, N.A., Complainant owns more than 100 trademark registrations for
a variety of marks featuring the CITI mark (e.g., Reg. No. 691,815 issued
January 19, 1960).
Respondent
registered the <citibankcreditcard.com> domain name on October 4,
2002, registered the <citibusinesscard.com> domain name on October
7, 2002, and registered the <citifinanical.com> domain name on
October 9, 2002. All of the domain
names resolve to similar search engine websites featuring links for “Top sites”
related to credit cards, bill payment, and related services. Many of the links
on the websites lead Internet users to various other websites advertising or
displaying information about financial services in direct competition with
Complainant’s business. The disputed
domain names also host numerous pop-up websites and advertisements.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant
established by extrinsic proof in this proceeding that Complainant has rights
to the CITI mark as a result of its registration with the United States Patent
and Trademark Office and by continuous use in commerce. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the
failure of Complainant to register all possible domain names that surround its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves.”).
The <citibankcreditcard.com>
and <citibusinesscard.com> domain names are confusingly
similar to Complainant’s CITI mark because the domain names incorporate
Complainant’s mark in its entirety, adding only the generic or descriptive
terms “bank credit card” and “business card,” which describe Complainant’s
business. The mere addition of a
generic or descriptive word to Complainant’s mark does not negate the confusing
similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of
Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
Additionally,
the <citifinanical.com> disputed domain name is confusingly
similar to Complainant’s CITI mark because the domain name incorporates
Complainant’s mark in its entirety, with the only difference being the addition
of a misspelled generic word commonly associated with the CITI mark, i.e.
“financial.” See Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition
of an ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity, as the result reflects a
very probable typographical error”); see also Pier 1
Imps., Inc. v. Success Work,
D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com>
is confusingly similar to Complainant's PIER 1 mark); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that the domain name <geociites.com> is
confusingly similar to Complainant’s GEOCITIES mark).
Furthermore,
Complainant’s mark is a fanciful mark due to its distinctive spelling, so it is
likely that the public would associate the particular spelling found in the
domain names with Complainant’s CITI mark and associated products and
services. See Marriott Int’l, Inc. v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark); see also Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp.
1419, 12 U.S.P.Q.2d 1091, 1098 (D. Minn. 1989) (quoting treatise:
"Fanciful marks, if adopted in a bona fide first use, are considered the
strongest of marks because their inherent novelty creates a substantial impact
on the buyer's mind").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the domain
names. The burden shifts to Respondent to show that it does have rights or
legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the
Complaint, it is assumed that Respondent lacks rights and legitimate interests
in the disputed domain names. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names).
Furthermore, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of the complaint to be deemed true).
Respondent is
not using the disputed domain names in connection with a bona fide offering of
goods or services under Policy ¶ 4(c)(i) and is not making a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using
domain names that are confusingly similar to Complainant’s CITI mark to
advertise a search engine website, and products and services of third parties
that are in direct competition with Complainant’s financial business. See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using Complainant’s
mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”); see also TM Acquisition Corp. v. Sign Guards, FA
132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary
use of Complainant’s marks to send Internet users to a website which displayed
a series of links, some of which linked to competitors of Complainant, was not
a bona fide offering of goods or services).
Finally,
Respondent offered no evidence and nothing in the record suggests that
Respondent is commonly known by the <citibankcreditcard.com>, <citibusinesscards.com>,
and <citifinanical.com> domain names. Furthermore, Complainant has never authorized or licensed
Respondent to use its CITI mark in any way.
Thus, Respondent has not established rights or legitimate interests in
the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered domain names that incorporate Complainant’s CITI mark
for Respondent’s commercial gain.
Respondent registered and used the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent intentionally attempted to
attract potential customers from Complainant to Respondent’s website by taking
advantage of Internet users who are searching under Complainant’s CITI mark and
diverting them to Respondent’s commercial website. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with Complainant’s mark and offering the same services as Complainant
via his website); see also Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad
faith where Respondent attracted users to a website sponsored by Respondent and
created confusion with Complainant’s mark as to the source, sponsorship, or
affiliation of that website).
Furthermore,
Respondent is using the <citibankcreditcard.com>, <citibusinesscard.com>,
and <citifinanical.com> domain names, which are confusingly
similar to Complainant’s CITI marks, to direct Internet users to various other
websites advertising or displaying information about financial services in
direct competition with Complainant’s business. The Panel finds that such competing use constitutes disruption
and is evidence that Respondent registered and used the disputed domain names
in bad faith pursuant to Policy ¶ 4(b)(iii).
See Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business
from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii));
see also S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <citibankcreditcard.com>, <citibusinesscard.com>,
and <citifinanical.com> domain names be TRANSFERRED from
Respondent to Complainant.
James A. Crary, Panelist
Dated:
April 20, 2005
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