Citywire Financial Publishers Ltd. v. charlie stroller / charter financial publishing
Claim Number: FA1905001841493
Complainant is Citywire Financial Publishers Ltd. (“Complainant”), United Kingdom. Respondent is charlie stroller / charter financial publishing (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citywireus.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2019; the Forum received payment on May 2, 2019.
On May 3, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citywireus.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@citywireus.com. Also on May 7, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
A. Complainant
Complainant uses their trademark CITYWIRE in connection with financial publication and information services. Complainant has rights in the CITYWIRE trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,493,427, registered Mar. 11, 2014). Respondent’s <citywireus.com> domain name is confusingly similar to Complainant’s CITYWIRE trademark, as it merely adds the generic or geographical term “us” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <citywireus.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CITYWIRE trademark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the <citywireus.com> domain name in bad faith as Respondent attempted twice to negotiate the sale of the domain name to Complainant. Respondent disrupts Complainant’s business by intentionally seeking to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following trademark registrations:
United Kingdom trademark No. 2,212,068 CITYWIRE (word), registered April 12, 2002 for services in classes 35, 36 and 41;
United States trademark No. 4,493,427 CITYWIRE (word), registered March 11, 2014 for goods and services in classes 9, 16, 35, 36 and 41;
European Union trademark No 001453307 CITYWIRE (word), registered August 6, 2002 for goods and services in classes 9, 16, 35, 36 and 41;
European Union trademark No 004696068 CITYWIRE (word), registered September 10, 2008 for goods and services in classes 9, 16, 35, 36 and 41;
Australian trademark No. 1172897 CITYWIRE (word), registered December 12, 2007 for goods and services in classes 9, 16, 35, 36 and 41;
Hong Kong trademark No. 302625651 CITYWIRE (word), registered December 19, 2013 for goods and services in classes 9, 16, 35, 36 and 41; and
International Registration No. 1175061 CITYWIRE (word), registered May 30, 2013 for goods and services in classes 9, 16, 35, 36 and 41, covering Singapore and Switzerland.
The disputed domain name <citywireus.com> was registered on July 26, 2018.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant claims rights in the CITYWIRE trademark based upon registration of the mark with the USPTO (e.g. Reg. No. 4,493,427, registered Mar. 11, 2014), as well as a number of national, regional and international trademark registrations in a number of countries around the world. Registration of a trademark with the USPTO is sufficient to establish rights in that trademark for the purposes of the Policy. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the CITYWIRE trademark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <citywireus.com> domain name is confusingly similar to the CITYWIRE trademark as it merely adds the generic or geographical term “us” and the gTLD “.com.” Generally, the addition of generic/geographic terms and/or a gTLD to a complainant’s trademark is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). In this case, the addition of “US” merely indicating that it is related to the trademark as sold in or to the United States. The Panel agrees that the disputed domain name is confusingly similar to Complainant’s CITYWIRE trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <citywireus.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CITYWIRE trademark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its trademark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information of record identifies the owner of the disputed domain name as “charlie stroller / charter financial publishing” and no information on record indicates that Respondent was authorized to register a domain name with Complainant’s trademark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <citywireus.com> domain name.
Complainant argues that Respondent’s bad faith is demonstrated by its offer to sell the <citywireus.com> domain name to the Complainant. Generally, offering to sell a confusingly similar domain name may indicate bad faith under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”).
Here, Complainant has attached screenshots of an email chain where Respondent offers to sell the disputed domain name to Complainant’s representatives. Accordingly, the Panel agrees with Complainant, and finds that Respondent offered to sell the domain name to Complainant in bad faith under Policy ¶ 4(b)(i).
Next, Complainant argues that Respondent’s bad faith is indicated by its use of the <citywireus.com> domain name to divert users to a competing website. Generally, use of a confusingly similar domain name to divert users to a website that directly competes with a complainant may establish bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products).
Here, Complainant has provided a screenshot of the website to which the disputed domain name resolves, showing a redirection to the <fa-mag.com> domain name, which appears to provide financial planning information. Thus, the Panel finds that Respondent’s use of the domain name to compete with Complainant provides additional evidence of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citywireus.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 6, 2019
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