Citizens Financial Group, Inc. v. Namespro.ca Private WHOIS
Claim Number: FA0905001260840
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <citziensbank.com>, registered with 1 Domain Source, Ltd. d/b/a Domain 1 Source, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 5, 2009.
On May 5, 2009, 1 Domain Source, Ltd. d/b/a Domain 1 Source, Inc. confirmed by e-mail to the National Arbitration Forum that the <citziensbank.com> domain name is registered with 1 Domain Source, Ltd. d/b/a Domain 1 Source, Inc. and that Respondent is the current registrant of the name. 1 Domain Source, Ltd. d/b/a Domain 1 Source, Inc. has verified that Respondent is bound by the 1 Domain Source, Ltd. d/b/a Domain 1 Source, 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 May 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 28, 2009 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@citziensbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
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 <citziensbank.com> domain name is confusingly similar to Complainant’s CITIZENS BANK mark.
2. Respondent does not have any rights or legitimate interests in the <citziensbank.com> domain name.
3. Respondent registered and used the <citziensbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citizens
Financial Group, Inc., provides a wide range of financial services including
personal and commercial banking, loans, and investments under its CITIZENS BANK
mark. Complainant holds a registration
of its CITIZENS BANK mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,482,203 issued August 28, 2001).
Respondent registered the <citziensbank.com> domain name on February 23, 2009. The disputed domain name resolves to a website that displays several hyperlinks to various third-party websites, some of which are in direct competition with Complainant.
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.
The Panel finds that Complainant has sufficiently established rights in the CITIZENS BANK mark under Policy ¶ 4(a)(i) because it holds a registration of this mark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <citziensbank.com>
domain name contains a misspelling of Complainant’s CITIZENS BANK mark by
transposing the second “i” and “z,” deletes the space within the mark, and
merely adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that none of these
alterations to Complainant’s mark sufficiently distinguish the disputed domain
name from Complainant’s mark. Therefore,
the Panel finds that the <citziensbank.com>
domain name is confusingly similar to Complainant’s CITIZENS BANK mark under
Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26,
2002) (finding <googel.com> to be confusingly similar to the
complainant’s GOOGLE mark and noting that “[t]he transposition of two letters
does not create a distinct mark capable of overcoming a claim of confusing
similarity, as the result reflects a very probable typographical error”); see also Bond
& Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30,
2007) (finding that the elimination of spaces between terms and the addition of
a gTLD do not establish distinctiveness from the complainant’s mark under
Policy ¶ 4(a)(i); see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s <citziensbank.com>
domain name resolves to a
website that displays several hyperlinks to various third-party websites, some
of which directly compete with Complainant. The Panel infers that Respondent
receives click-through fees for these hyperlinks. Therefore, the Panel finds that Respondent’s
use of the confusingly similar disputed domain name, along with the
aforementioned hyperlinks, diverts Internet users to competing websites for
commercial gain, and thus is not a bona
fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4 (c)(iii). See ALPITOUR
S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding
that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites
from which Respondent presumably receives referral fees….is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27,
2007) (holding that the operation of a pay-per-click website at a confusingly
similar domain name was not 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)).
Furthermore, Respondent is listed in the WHOIS information
as “Namespro.ca Private WHOIS,” which
does not indicate that Respondent is commonly known by the <citziensbank.com> domain name.
Respondent has not offered any evidence to indicate otherwise. The Panel finds that Respondent is not
commonly known by the disputed domain name under 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
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record).
Finally, the Panel
finds that Respondent is engaged in typosquatting because Respondent is taking
advantage of a common misspelling of Complainant’s CITIZENS BANK mark by diverting
Internet users. Therefore, the Panel
finds that Respondent’s engagement in typosquatting is further evidence that
Respondent lacks rights and legitimate interests in the <citziensbank.com> domain name under Policy ¶ 4(a)(ii). See Microsoft
Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that
Respondent is using the disputed domain name to divert Internet users to
websites that directly compete with Complainant using the aforementioned
hyperlinks. Therefore, the Panel find
that this diversion disrupts Complainant’s business and constitutes bad faith
registration and use under Policy ¶ 4(b)(iii).
See Red Hat, Inc. v.
Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the
respondent engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iii) by using the disputed domain names to operate a commercial search
engine with links to the products of the complainant and to complainant’s competitors,
as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)).
In addition, Respondent is using the confusingly similar <citziensbank.com> domain name and the aforementioned hyperlinks to collect click-through fees. Accordingly, the Panel finds that Respondent’s use of the disputed domain name to commercially gain from that use creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Finally, the Panel
finds that Respondent is engaged in typosquatting because it is taking
advantage of a common misspelling of Complainant’s CITIZENS BANK mark by
diverting Internet users to websites that directly compete with Complainant. The Panel finds that Respondent engaging in
typosquatting is evidence of bad faith registration and use of the <citziensbank.com> domain name under Policy ¶ 4(a)(iii). See Nat’l
Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting … is the intentional misspelling of words with [the]
intent to intercept and siphon off traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”); see also
Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum Oct. 15, 2003) (“Respondent’s registration and use of [the
<zonelarm.com> domain name] that capitalizes on the typographical error
of an Internet user is considered typosquatting. Typosquatting, itself is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
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 <citziensbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 16, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum