Citadel Investment Group, L.L.C. v. John Getty
Claim Number: FA0705000993123
Complainant is Citadel Investment Group, L.L.C. (“Complainant”), represented by Carrie
L. Kiedrowski, of Jones Day,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <citadelgp.com>, registered with Abr Products d/b/a Misk.com.
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 A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On June 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 21, 2007 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@citadelgp.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citadelgp.com> domain name is confusingly similar to Complainant’s CITADEL mark.
2. Respondent does not have any rights or legitimate interests in the <citadelgp.com> domain name.
3. Respondent registered and used the <citadelgp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citadel Investment Group, is a worldwide
corporation offering various financial services, including investment
management and consultation services along with a highly successful hedge
fund. Complainant has conducted business
under its CITADEL mark since at least 1990 and offers its services online
through the <citadelgroup.com> and related domain names. Complainant holds numerous trademark registrations
for the CITADEL mark, including a registration with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,812,459 issued
Respondent registered the <citadelgp.com> domain name on
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. 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 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’s registration of the CITADEL mark with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <citadelgp.com>
domain name is confusingly similar to Complainant’s CITADEL mark, as it
simply adds the letters “gp” onto the end of the mark, which is an abbreviation
for the word “group” and bears an obvious resemblance to Complainant’s title,
Citadel Investment Group. Moreover, the
addition of the generic top-level domain (“gTLD”) “.com” is not relevant to the
Policy ¶ 4(a)(i) analysis as a gTLD is a required element of all domain names. Thus, the <citadelgp.com> domain name is confusingly similar to
Complainant’s CITADEL mark pursuant to Policy ¶ 4(a)(i). See Kelson Physician Partners, Inc. v. Mason,
CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or
confusingly similar to the complainant’s federally registered service mark,
KELSON); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business); see also Nev. State Bank v. Modern Ltd. – Cayman Web
Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been
established that the addition of a generic top-level domain is irrelevant when
considering whether a domain name is identical or confusingly similar under the
Policy.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum
The Panel thus finds that Policy ¶ 4(a)(i) has been
satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <citadelgp.com> domain name. However, once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the present case, Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises the presumption
that Respondent lacks rights or legitimate interests in the disputed domain
name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s WHOIS information does not indicate, and there is nothing else in the record to suggest, that Respondent is commonly known by the <citadelgp.com> domain name. Moreover, Respondent is not licensed or authorized by Complainant to use the CITADEL mark for any purpose. The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <citadelgp.com> domain name resolves to a website that incorporates Complainant’s mark and offers financial and investment services in direct competition with Complainant. The Panel infers that Respondent is benefiting commercially from this website. Such use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit 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 also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent’s is using the <citadelgp.com> domain name to divert Internet users to a website that offers financial services in direct competition with Complainant. This constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Furthermore, the Panel presumes that Respondent is benefiting commercially from the website that resolves from the <citadelgp.com> domain name. Respondent is thus capitalizing on the likelihood that Internet users will confuse the source of the disputed domain name as being affiliated with Complainant’s CITADEL mark and Complainant’s business. This is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
The Panel thus 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 <citadelgp.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 2, 2007
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