Citigroup Inc. and Primerica Financial Services, Inc. v. Marc Gahary and gahary.com
Claim Number: FA0912001298515
Complainant is Citigroup Inc. and Primerica Financial Services, Inc. (“Complainant”), represented by Christopher J. Willis of Rogers & Hardin LLP, GA. Respondent is Marc Gahary and gahary.com (“Respondent”), CA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <primerica.org> registered with Tucows, Inc., and <primerica.nu>, registered with eNom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 10, 2009; the National Arbitration Forum received a hard copy of the Complaint December 11, 2009.
On December 11, 2009, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <primerica.org> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. verified that Respondent is bound by the Tucows, Inc., registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 11, 2009, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <primerica.nu> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 12, 2010, 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@primerica.org and postmaster@primerica.nu by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <primerica.org> and <primerica.nu>, are identical to Complainant’s PRIMERICA mark.
2. Respondent has no rights to or legitimate interests in the <primerica.org> and <primerica.nu> domain names.
3. Respondent registered and used the <primerica.org> and <primerica.nu> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Citigroup Inc. is the owner of Complainant Primerica Financial Services, Inc., a provider of life insurance, investments and other financial products and services. Complainants together own an extensive family of trademarks and service marks comprised of or featuring the PRIMERICA mark. Complainants (hereafter “Complainant,”) registered the PRIMERICA mark with the United States Patent and Trademark Office (“USPTO”) for financial planning, securities brokerage and mutual fund investment services (Reg. No. 1,501,588 issued August 23, 1988).
Respondent, Marc Gahary, registered the disputed domain names no earlier than January 24, 2005. The <primerica.org> domain name previously resolved to a website displaying links to competing third-party websites. After Complainant sent Respondent a cease-and-desist letter, the website resolving from the <primerica.org> domain name changed to an under construction website. Respondent is using the <primerica.nu> domain name to resolve to a website displaying competing links.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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’s trademark registration with the USPTO for the PRIMERICA establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (“Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (‘USPTO’).”).
Respondent’s <primerica.org> and <primerica.nu>
domain names each contain Complainant’s PRIMERICA mark in its entirety and
merely add a generic top-level domain (“gTLD”) “.org” or a country-code
top-level domain (“ccTLD”) “.nu.” The
Panel notes that the addition of a gTLD or a ccTLD is irrelevant under the
Policy. The <primerica.org>
and <primerica.nu> domain names are identical to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See See Europcar Int’l
SA v. New Media Research in
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights to or legitimate interests in the <primerica.org> and <primerica.nu> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden of proof 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 made 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 alleged that Respondent is not commonly known by the <primerica.org> and <primerica.nu> domain names. The WHOIS information identifies the registrant as “Marc Gahary,” and Complainant has alleged that Respondent is not licensed or authorized to use the PRIMERICA mark in any way. Thus, the Panel finds that Respondent is not commonly known by the <primerica.org> and <primerica.nu> domain names 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’s <primerica.org> domain name previously resolved to a website that directly competes with Complainant. Also, Respondent’s <primerica.nu> domain name currently resolves to a directly competing website. The Panel finds that Respondent’s previous and current uses of the disputed domain names fail to qualify as 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). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Respondent is not currently making an active use of the <primerica.org> domain name and therefore cannot demonstrate that its use of the disputed domain name constitutes either 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). See Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the passive holding of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain names either previously resolved or currently resolve to a website that sells competitive goods. The Panel finds that these competitive uses constitute disruption, and as a result also finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Furthermore, Respondent registered the identical disputed
domain names and either previously or currently resolved them to directly
competitive websites. Through this use,
the Panel finds that Respondent created a likelihood of confusion for
commercial gain as to Complainant’s source and endorsement of the disputed domain
names and resolving websites. The Panel
finds that these uses constitute evidence of Respondent’s bad faith
registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb.
Forum May 14, 2001) (finding bad faith where the respondent used the domain
name, for commercial gain, to intentionally attract users to a direct
competitor of the complainant); see also Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of
the <saflock.com> domain name to offer goods competing with the
complainant’s illustrates the respondent’s bad faith registration and use of
the domain name, evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv)).
The Panel finds Respondent’s current failure to use the <primerica.org>
domain name also demonstrates bad faith registration and use pursuant to Policy
¶ 4(a)(iii). See Disney Enters. Inc. v.
Meyers, FA 697818 (Nat. Arb.
Forum June 26, 2006) (holding that the non-use of a disputed domain name for
several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)); see also
Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding
that the respondent made no use of the domain name or website that connects
with the domain name, and that inactive use of a domain name permits an
inference of registration and use in bad faith).
The Panel finds that Complainant satisfied the elements of ICANN 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 <primerica.org> and <primerica.nu> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 3, 2010
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