Citizens Financial Group, Inc. v. DOMAIN MAYBE FOR SALE c/o Dynadot
Claim Number: FA1901001827738
Complainant is Citizens Financial Group, Inc. ("Complainant"), represented by Robert M. O'Connell of Fish & Richardson P.C., Massachusetts, USA. Respondent is DOMAIN MAYBE FOR SALE c/o Dynadot ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citizensbankmadeready.com>, registered with Dynadot, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2019; the Forum received payment on January 30, 2019.
On January 31, 2019, Dynadot, LLC confirmed by email to the Forum that the <citizensbankmadeready.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to email@example.com. Also on February 5, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 February 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant is a large financial services firm founded in 1828. Complainant has used various iterations of CITIZENS since 1871, and has used the CITIZENS BANK mark for more than forty years. Complainant currently has approximately 1,200 branches in eleven U.S. states; its website receives nearly 10 million visits per month. Complainant claims common law trademark rights in CITIZENS BANK, and owns numerous U.S. trademark registrations for CITIZENS, CITIZENS BANK, and related marks. In addition, Complainant applied on December 19, 2018, to register the mark CITIZENS BANK MADE READY; this application currently awaits examination at the U.S. Patent & Trademark Office.
Respondent registered the disputed domain name <citizensbankmadeready.com> on December 22, 2018. The domain name redirects to a web page offering to sell the domain name for $988. Complainant states that Respondent is not commonly known by the domain name, is not affiliated with Complainant in any way, and has not been authorized or licensed by Complainant to use any of Complainant's marks.
Complainant contends on the above grounds that the disputed domain name <citizensbankmadeready.com> is confusingly similar to its CITIZENS BANK mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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."
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. Webnet-Marketing, Inc., FA 95095 (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.").
The disputed domain name <citizensbankmadeready.com> combines Complainant's registered CITIZENS BANK trademark and the generic phrase "made ready," omitting the spaces and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Royal Bank of Scotland Group plc, Citizens Financial Group, Inc., Churchill Insurance Co. Ltd., Hanco ATM Systems Ltd. & Privilege Insurance Co. Ltd. v. Domaincar c/o Perthshire Marketing a/k/a Domaincar, FA 671079 (Forum May 30, 2006) (finding <citizensbankonlinebanking.com> confusingly similar to CITIZENS BANK). The Panel therefore considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum August 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for the sole apparent purpose of advertising the domain name itself for sale. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., TechSmith Corp. v. Vildan Erdogan, FA 1803825 (Forum September 25, 2018).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The factors set forth in paragraph 4(b) are not exhaustive; the totality of the circumstances must be considered in the assessment of bad faith, and the timing of the registration in particular may be such as to support an inference of bad faith intent. See, e.g., TechSmith Corp. v. Vildan Erdogan, supra (finding bad faith where domain name corresponding to a trademark was registered on the day that Complainant applied for register the mark).
Respondent registered a domain name incorporating Complainant's longstanding CITIZENS BANK mark and corresponding to the longer form mark that Complainant had applied to register just three days earlier. The domain name appears to have been registered through a privacy service, concealing Respondent's actual identity, and its sole apparent use has been to advertise the domain name itself for sale. Under the circumstances, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citizensbankmadeready.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 4, 2019
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