Citigroup Inc and Citigroup Foundation v. Western Data
Exchange c/o P K
Claim Number: FA0801001139798
Complainant is Citigroup Inc and Citigroup Foundation (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <citifoundation.com>, registered with Enom, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 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@citifoundation.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 <citifoundation.com> domain name is confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citifoundation.com> domain name.
3. Respondent registered and used the <citifoundation.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Citigroup Inc, is a world-renowned
financial services company. Citigroup
Inc registered the CITI mark with the United States Patent and Trademark Office
(“USPTO”) on
Respondent, Western Data
Exchange, registered the <citifoundation.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 registered its CITI mark with the USPTO in 1981. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in the mark to the complainant. Therefore, the Panel acknowledges Complainant’s rights in the CITI mark pursuant to Policy ¶ 4(a)(i). See Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (“The Panel finds that Complainant’s timely registration [with the USPTO] and subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that the <citifoundation.com> domain name is confusingly similar to its CITI mark. The disputed domain name contains Complainant’s mark in its entirety and adds the generic term “foundation” as well as the generic top-level domain (“gTLD”) “.com.” This only adds to the confusing similarity since Complainant operates under the name “Citi Foundation,” and the use of a gTLD is irrelevant under an analysis of the Policy. Therefore, the Panel agrees with Complainant, and concludes that the <citifoundation.com> domain name is confusingly similar to Complainant’s CITI mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <citifoundation.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by
the <citifoundation.com>
domain name, and this contention is supported by the WHOIS registration
information listing Respondent as “Western Data
Exchange c/o P K Montgomery.”
Furthermore, Complainant states that it has not licensed, authorized, or
otherwise permitted Respondent to use its CITI mark in a domain name. Based on this evidence and Respondent’s
failure to submit affirmative evidence indicating otherwise, the Panel finds
that Respondent cannot establish rights or legitimate interests in the <citifoundation.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that the
respondent was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Respondent is using the <citifoundation.com> domain name to redirect Internet users to <unitedcharity.info>, where Respondent features links to various charitable organizations. Thus, Respondent’s use is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) since Respondent is not offering any goods or services for sale. See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”). Respondent may receive click-through fees for each redirected Internet user, and is certainly exploiting Complainant’s CITI mark to advertise various unassociated charities. Therefore, Respondent’s use of the <citifoundation.com> domain name also does not constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
In a telephone conversation between Respondent’s
representative and Complainant’s counsel, Respondent offered to sell the <citifoundation.com> domain name
registration to Complainant. The Panel
finds Respondent’s apparent willingness to dispose of its rights as further
evidence that Respondent lacks rights and legitimate interests in the <citifoundation.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Am.
Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003)
(“Respondent’s lack of rights and legitimate interests in the domain name is
further evidenced by Respondent’s attempt to sell its domain name registration
to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s offer to sell the <citifoundation.com> domain name to Complainant
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For
Complainant offers philanthropic services using the CITI mark, and specifically through the Citi Foundation. Respondent uses the confusingly similar <citifoundation.com> domain name to advertise various unassociated charity services. Thus, Internet users are likely to be confused as to the sponsorship, affiliation, or endorsement of the services advertised on Respondent’s website that resolves from the <citifoundation.com> domain name. Respondent is presumably profiting from this use by earning click-through fees for each redirected Internet user. The Panel therefore concludes that Respondent registered and is using the <citifoundation.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel 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 <citifoundation.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 13, 2008
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