Citigroup Inc. and Primerica Financial Services Inc. v. Rix, USA
Claim Number: FA0609000794397
Complainant is Citigroup Inc. and Primerica Financial Services Inc. (collectively, “Complainant”), represented by Christopher J. Willis of Rogers & Hardin LLP, 229 Peachtree Street, Suite 2700, Atlanta, GA, 30303. Respondent is Rix, USA (“Respondent”), PO Box 2934, Bellaire, TX, 77402-2934.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <primericabuster.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 12, 2006; the National Arbitration Forum received a hard copy of the Complaint September 13, 2006.
On September 12, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <primericabuster.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 2006, 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@primericabuster.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <primericabuster.com>, is confusingly similar to Complainant’s PRIMERICA mark.
2. Respondent has no rights to or legitimate interests in the <primericabuster.com> domain name.
3. Respondent registered and used the <primericabuster.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., by and through its subsidary,
Primerica Financial Services, Inc., has been providing life insurance,
investments, and other financial products and services since 1977. Since that time Primerica has become one of
the largest international marketers of term insurance and currently serves more
than six million clients in North America and Europe. Complainant holds a registration with the United States Patent
and Trademark Office (“USPTO”) for the PRIMERICA mark (Reg. No. 1,501,588
issued August 23, 1988).
Respondent registered the <primericabuster.com> domain name March 6, 2004. Respondent’s disputed domain name resolves to a website that displays a complaint site against Complainant and Complainant’s services.
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 will draw such inferences as the Panel 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 (Nat. Arb. 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); see also 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 with extrinsic proof in this proceeding
that it has rights in the domain name contained in its entirety within the
disputed domain name. The Panel finds
that Complainant’s registrations with the USPTO sufficiently establish
Complainant’s rights in the PRIMERICA mark.
See Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”);
see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
The Panel finds that Respondent’s <primericabuster.com> domain name is confusingly similar to Complainant’s PRIMERICA mark pursuant to Policy ¶ 4(a)(i) as it combines Complainant’s entire mark with the generic term “buster.” Such an addition is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name under 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 the complainant combined with a generic word or term); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds that Complainant satisfied Policy ¶
4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name. Complainant asserts as well that Respondent lacks such rights to or legitimate interests with respect to the mark contained in its entirety within the <primericabuster.com> domain name. Once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant also asserts that Respondent is not authorized to use Complainant’s PRIMERICA mark and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information suggests that Respondent is not commonly known by the <primericabuster.com> domain name or Complainant’s PRIMERICA mark.. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in the disputed domain name where the respondent was not known by the mark. See 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").
Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The evidence on record indicates that Respondent is using
the disputed domain name to operate a complaint site against Complainant. Respondent does not establish rights or
legitimate interests in the <primericabuster.com> domain name by
operating a complaint site at a domain name that contains Complainant’s mark as
its primary feature. Accordingly, the
Panel finds that such use is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See
Weekley Homes, L.P. v. Fix My House
Or Else?, FA 96609 (Nat.
Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing
criticism is not a legitimate use of the <davidweekleyhome.com> domain
name because the disputed domain name is confusingly similar to the
complainant's DAVID WEEKLEY HOMES mark); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug.
3, 2000) (finding that establishing a legitimate free speech/complaint site
does not give rights to use a famous mark in its entirety).
The Panel finds that
Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also asserts that Respondent acted in bad faith
in registering and using a domain name that contains in its entirety
Complainant’s protected PRIMERICA mark. Respondent is attempting to attract
Internet users attempting to locate Complainant’s services to Respondent’s
website in hopes of exposing Internet users to Respondent’s personal beliefs
regarding the services offered by Complainant.
Such a use of Complainant’s mark constitutes bad faith registration and
use under Policy ¶ 4(a)(iii). See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO May 14, 2001) (stating that although the respondent’s complaint website
did not compete with the complainant or earn commercial gain, the respondent’s
appropriation of the complainant’s trademark with a view to cause “damage and
disruption to [Complainant] cannot be right, still less where the use of the
Domain Name will trick internet users intending to visit the trademark owner’s
site into visiting the registrant’s site” in holding that the disputed domain
name was registered in bad faith); see
also Mission KwaSizabantu v.
Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent
registered the domain names <kwasizabantu.com>, <kwasizabantu.org>,
and <kwasizabantu.net> in bad faith where the respondent published
negative comments regarding the complainant’s organization on the confusingly
similar website).
The Panel finds that Respondent’s use of Complainant’s PRIMERICA mark to host a complaint website regarding Complainant and its services is evidence of bad faith registration and use.
The Panel further finds that Respondent’s use of a confusingly similar website to redirect Internet users, attempting to find Complainant’s site, to Respondent’s site constitutes disruption under Policy ¶ 4(b)(iii). This is further demonstrated by evidence on the record that indicates that Respondent is a former employee for a direct competitor of Complainant. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between complainant and respondent, respondent likely registered the contested domain name with the intent to disrupt complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that, respondent registered the domain name in question to disrupt the business of complainant, a competitor of the respondent).
The Panel finds that Complainant 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 <primericabuster.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 26, 2006.
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