Citigroup Inc. v. DOMAIN IS FOR SALE AT WWW.DAN.COM ---- c/o Dynadot
Claim Number: FA2112001977127
Complainant is Citigroup Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is DOMAIN IS FOR SALE AT WWW.DAN.COM ---- c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citilatitude.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2021; the Forum received payment on December 14, 2021.
On December 15, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <citilatitude.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 December 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2022 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@citilatitude.com. Also on December 15, 2021, 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 January 6, 2022, 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
The Complainant is a multinational banking and financial services corporation. It filed its CITI LATITUDE trademark with the United States Patent and Trademark Office (“USPTO”) on October 6, 2021 (e.g., Serial No. 970,619,942).
Complainant also maintains registration in the CITI trademark with the USPTO (e.g., Reg. No. 1,181,467, registered Dec. 8, 1981) among other authorities.
The <citilatitude.com> domain name is identical or confusingly similar to the CITI LATITUDE trademark which Complainant applied for, because it wholly incorporates Complainant’s trademark, merely adding in the “.com” generic top-level domain (“gTLD”) to form a domain name. Additionally, the <citilatitude.com> domain name is identical or confusingly similar to the CITI trademark because of the inclusion of Complainant’s CITI trademark with the addition of the term “latitude” and the “.com” gTLD.
Respondent does not have any rights or legitimate interests in the <citilatitude.com> domain name because Respondent is not commonly known by the domain name nor is Respondent an authorized user or licensee of Complainant’s CITI trademark. Additionally, Respondent lacks rights or legitimate interests in the domain name through its general offer to sell the domain name and through Respondent’s use of a privacy service to conceal its identity.
Respondent registered and uses the <citilatitude.com> domain name in bad faith because Respondent makes a general offer to sell the domain name in excess of out-of-pocket costs. Respondent acted in opportunistic bad faith. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CITI trademark, and knowing of Complainant’s application for the CITI LATITUDE trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,181,467 CITI (word), registered December 8, 1981 for services in Intl Class 36;
No. 2,424,088 CITI (fig), registered January 23, 2001 for services in Intl Classes 35 and 36; and
No. 3,086,206 CITI (word), registered April 25, 2006 for services in Intl Classes 35 and 36.
The Complainant is also the owner of the following U.S. trademark pending applications:
No. 97,061,942 CITI LATITUDE (word), applied October 6, 2021 for services in Intl Classes 35, 36 and 41; and
No. 97,083,664 CITI LATITUDE (fig), applied October 20, 2021 for services in Intl Classes 35, 36 and 41.
The Complainant has also provided a list of total 100 CITY-trademark registrations and applications (including the above-mentioned) in USA and other countries around the world.
The disputed domain name <citilatitude.com> was registered on October 8, 2021.
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 CITI LATITUDE trademark through its application for registration submitted to the USPTO. However, a pending trademark application does not by itself establish trademark rights within the meaning of Policy ¶ 4(a)(i). Although non-registered trademarks can be considered according to the Policy, as long as they have been proved to be able to identify the Complainant, the Panel is not convinced that the added word LATITUDE as such at this stage can identify the Complainant.
The fact that the Complainant, at the time of the Respondent’s registration of the disputed domain name, had two pending trademark applications for CITI LATITUDE is rather a topic for “Bad Faith” – see further below.
The Complainant also asserts rights in the CITI trademark through its registration with multiple authorities, including the USPTO. Registration of a trademark with multiple authorities is sufficient to establish rights under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Complainant provides copies of its registration records with the USPTO (e.g., Reg. No. 1,181,467, registered Dec. 8, 1981), as well as a list of all other trademark registrations and pending applications. Therefore, the Panel find that Complainant has rights in the CITI trademark under Policy ¶ 4(a)(i).
Complainant argues that the <citilatitude.com> domain name is identical or confusingly similar to Complainant’s CITI trademark because it wholly incorporates Complainant’s trademark, adding in the term “latitude” and the “.com” gTLD. Previous Panels have found domain names to be identical or confusingly similar, under Policy ¶ 4(a)(i), where a domain name wholly incorporates the trademark of another while adding in a single term and a gTLD to form a domain name. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Therefore, the Panel find that the <citilatitude.com> domain name is at least confusingly similar to Complainant’s CITI trademark under 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”).
The Complainant argues that Respondent does not have any rights or legitimate interests in the <citilatitude.com> domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized or licensed to use Complainant’s CITI or CITI LATITUDE trademarks. Where a respondent does not provide evidence to the contrary, evidence that a respondent is not commonly known by a domain name may be found where the identifying WHOIS information is unrelated to a domain name and where a respondent is not authorized to use a complainant’s trademark. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain name lists the registrant as “DOMAIN IS FOR SALE AT WWW.DAN.COM – c/o Dynadot”, and there is no other evidence to suggest that Respondent was authorized to use the Complainant’s trademark or was commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant secondly asserts that Respondent does not have any rights or legitimate interests in the <citilatitude.com> domain name because Respondent utilized a privacy service to conceal its identity. Use of a privacy service to conceal one’s identity may be evidence of a lack of rights or legitimate interests under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Complainant asserts that the identifying WHOIS information that lists the registrant as ““DOMAIN IS FOR SALE AT WWW.DAN.COM – c/o Dynadot” is Respondent’s attempt at using a proxy service in which to mask its identity. The Panel agree with that conclusion, and find that Respondent is not commonly known by the <citilatitude.com> domain name, thus not having rights or legitimate interests under Policy ¶ 4(c)(ii).
Complainant finally argues Respondent fails to use the <citilatitude.com> domain name for any bona fide offer of goods or services, or for any legitimate noncommercial or fair use, instead offering the domain name for sale. A general offer for sale of a domain name may not qualify as a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). The resolving website associated with the disputed domain name in the present case displays a message saying that the domain name is for sale for $75,000. Therefore, the Panel find that Respondent does not have any rights or legitimate interests in the <citilatitude.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <citilatitude.com> domain name in bad faith because Respondent makes an offer to sell the domain name in excess of out-of-pocket costs. A domain that that is for sale in excess of out-of-pocket costs may be evidence of bad faith under Policy ¶ 4(b)(i). See Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). As noted above, Complainant provides a screenshot of the resolving which show that the domain name is for sale for $75,000, an amount Complainant asserts is well in excess of the cost of registration. Therefore, the Panel find that Respondent registered and uses the <citilatitude.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant argues Respondent acted with actual knowledge of Complainant’s rights in the CITI LATITUDE and CITI trademarks. Actual knowledge may be found where a respondent uses a very famous trademark of another. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant asserts that Respondent must have registered the disputed domain name with actual knowledge because Complainant’s CITI trademark has gained fame and notoriety through its worldwide use and promotion of its services. The Panel agrees with that conclusion.
Further, it is rather obvious that the Respondent had clear knowledge of the pending trademark application CITI LATITUDE, and – as soon as it was officially searchable though USPTO’s TESS – decided to register the pending trademark as an identical domain name.
To summarize, the Panel find that Respondent acted with actual knowledge, thus acting in bad faith under 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 <citilatitude.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 17, 2022
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