Citigroup Inc. and Primerica Financial Services, Inc. v. Domain Ownership Limited
Claim Number: FA0801001140404
Complainant is Citigroup Inc. and Primerica Financial Services,
Inc. (collectively, “Complainant”),
represented by Christopher J. Willis, of Rogers & Hardin LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <primericafinancial.com>, registered with Moniker Online Services, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 28, 2008.
On January 25, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <primericafinancial.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 January 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 2008 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@primericafinancial.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Citigroup Inc. and its remote subsidiary, Primerica Financial Services, Inc. (collectively, “Complainant”), is a world-renowned financial services company.
Complainant has used the PRIMERICA service mark for nearly twenty years in connection with its life insurance, investments, and other financial services and products.
Complainant holds a registration for the PRIMERICA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,501,588, issued August 23, 1988).
Complainant’s PRIMERICA service mark has become well-known as representative of high-quality financial services.
Respondent registered the disputed <primericafinancial.com> domain name on February 20, 2004.
Respondent is not commonly known by the <primericafinancial.com> domain name.
Complainant has not given Respondent permission to use its PRIMERICA mark.
Respondent’s domain name resolves to a website that features Complainant’s PRIMERICA mark and displays links to third-party websites offering financial services in competition with Complainant’s business.
Respondent’s <primericafinancial.com> domain name is confusingly similar to Complainant’s PRIMERICA mark.
Respondent does not have any rights or legitimate interests in the domain name <primericafinancial.com>.
Respondent registered and uses the contested <primericafinancial.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 was registered and is being used by Respondent 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of the PRIMERICA service mark
with the USPTO establishes its rights in the mark pursuant to 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.”
Respondent’s <primericafinancial.com> domain name is confusingly similar to Complainant’s PRIMERICA mark. The disputed domain name incorporates the entire PRIMERICA mark, and merely adds the generic term “financial,” which is descriptive of Complainant’s business. This addition is not sufficient to distinguish the disputed domain name from the mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to a complainant’s AIG mark failed sufficiently to differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to that complainant’s business).
Moreover, the addition of the generic top-level domain “.com” is irrelevant to this discussion, because a top-level domain is required of all domain names. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a competing mark); 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.
The Panel therefore finds that Complainant has satisfied Policy
¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), once Complainant has made out a prima facie showing that Respondent lacks rights to and legitimate interests in the <primericafinancial.com> domain name, the burden shifts to Respondent to refute that showing. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that 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 appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In the instant case, Complainant has established a prima facie case as required by the Policy. And, inasmuch as Respondent has not filed an answer to the Complaint in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint). However, we will nonetheless examine the evidence of record to determine if there is any basis for determining that Respondent has rights or interests as described in Policy ¶ 4(c).
We begin by noting that the Complaint indicates, and
Respondent does not deny, that Respondent’s domain name resolves to a website
that includes Complainant’s PRIMERICA mark and features links to third-party
websites offering financial services that compete with Complainant’s
business. We may presume that Respondent
receives click-through fees when Internet users click on these links. We conclude, therefore, that Respondent is not
using the disputed domain name in connection with either 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 Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003): “Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.” See also Glaxo Group Ltd.
v. WWW Zban, FA 203164 (Nat. Arb. Forum
Dec. 1, 2003) (finding that a respondent was not using a domain name within the
parameters of Policy ¶ 4(c)(i) or (iii) because that respondent used the domain
name to take advantage of a complainant's mark by diverting Internet users to a
competing commercial site).
We also observe that Respondent does not contest Complainant’s assertion that Respondent is not commonly known by the <primericafinancial.com> domain name, which indicates a lack of rights and legitimate interests under Policy ¶ 4(c)(ii). This assertion is bolstered by the fact that the pertinent WHOIS information identifies Respondent as “Domain Ownership Limited,” and there is no evidence in the record to suggest that Respondent is known by the disputed domain name. Furthermore, Complainant alleges, and Respondent does not deny, that Complainant has not given Respondent permission to use its PRIMERICA mark. Therefore, we conclude that Respondent lacks rights and legitimate interests in the <primericafinancial.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s rights in a domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question).
The Panel thus finds that Complainant has satisfied Policy ¶
4(a)(ii).
It is evident that Respondent is capitalizing on the
likelihood that Internet users, presumably seeking Complainant’s financial
services, will be confused as to the possible source of the <primericafinancial.com> domain
name and Complainant’s affiliation with the corresponding website. This indicates Respondent’s bad faith
registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003):
As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).
See also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
For these reasons, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <primericafinancial.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 6, 2008
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