Citadel Investment Group L.L.C. and its related entity, KCG IP Holdings, LLC v. Anthony N.Georgiuo a/k/a Anthony Georgiou
Claim Number: FA1301001482483
Complainant is Citadel Investment Group L.L.C. and its related entity, KCG IP Holdings, LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, LLP, Illinois, USA. Respondent is Anthony N.Georgiuo a/k/a Anthony Georgiou (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelworld.com>, registered with Register.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2013; the National Arbitration Forum received payment on January 30, 2013.
On January 30, 2013, Register.com confirmed by e-mail to the National Arbitration Forum that the <citadelworld.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 January 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2013 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@citadelworld.com. Also on January 31, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" 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 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
Complainant made the following contentions.
i. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the CITADEL mark (Reg. No. 3,213,943 registered Feb. 27, 2007).
ii. Complainant also owns a registration for the CITADEL mark in the European Union with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 002170009 registered August 2, 2002).
iii. Respondent registered the <citadelworld.com> domain name on October 7, 2002.
iv. The disputed domain name fully incorporates Complainant’s CITADEL mark in its entirety, with the addition of the generic term “world” and the generic top-level domain (“gTLD”) “.com.” These additions do not distinguish the disputed domain name from Complainant’s mark.
i. Respondent is not commonly known by the disputed domain name or any marks similar to it.
ii. Complainant has not authorized Respondent to use its CITADEL mark in any way.
iii. The disputed domain name resolves to a website that has been flagged by anti-virus software as being unsafe and unable to open unless spyware is disabled. Such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).
i. Respondent had actual or constructive knowledge of Complainant’s rights in the CITADEL marks.
ii. The disputed domain name resolves to a website offering services in competition with those offered under Complainant’s marks, which is a clear example of bad faith under Policy ¶ 4(b)(iv).
iii. Respondent’s use of the disputed domain name to offer competitive services is disruptive to Complainant’s business and evidence of bad faith use under Policy ¶ 4(b)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is well known as a successful provider of alternative investments.
2. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the CITADEL mark (Reg. No. 3,213,943 registered Feb. 27, 2007) and also owns a registration for the CITADEL mark in the European Union with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 002170009 registered August 2, 2002).
3. Respondent registered the disputed domain name on October 7, 2002. It resolves to a website that is flagged by anti-virus software as unsafe and offers investment services to investors in the US and Europe in competition with those of 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."
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(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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants: Citadel Investment Group, L.L.C. and KCG IP Holdings, L.L.C. Complainants contend that KCG IP Holdings, LLC is a related entity of Citadel Investment Group, L.L.C. Complainants note that Citadel Investment Group, L.L.C. uses the CITADEL mark under license from KCG IP Holdings, LLC. Therefore, Complainants request to proceed to act as a single Complainant.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and accordingly, it will treat them all as a single entity in this proceeding.
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims rights in the CITADEL trademark based on its registration of the mark with the USPTO (Reg. No. 3,213,943 registered February 27, 2007). Complainant also notes that it has registered the CITADEL mark in the European Union with the OHIM (Reg. No. 002170009 registered August 2, 2002). See Complainant Exhibit C. The Panel notes that previous panels have found registration with the USPTO or the OHIM to be sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has established rights in the CITADEL trademark pursuant to Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CITADEL mark. Complainant claims that Respondent’s <citadelworld.com> domain name is confusingly similar to Complainant’s CITADEL trademark under Policy ¶ 4(a)(i). Complainant notes that the disputed domain name incorporates the CITADEL mark in its entirety, adding only the gTLD “.com” and the generic term “world.” The Panel notes that past panels have found the addition of a gTLD to be irrelevant to a confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel also notes that previous panels have found confusing similarity where a domain name differs from a mark only by adding a generic term such as the word “ world” in the present case. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). Therefore, the Panel finds that the <citadelworld.com> domain name is confusingly similar to Complainant’s CITADEL mark, pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CITADEL trademark and to use it in its domain name, adding the generic word “world” indicating that the domain name relates to the worldwide activities of Complainant, which emphasizes the confusing similarity between the domain name and the trademark;
(b) Respondent has then caused the disputed domain name to resolve to a website that is flagged by anti-virus software as unsafe and offers investment services to investors in the US and Europe in competition with those of Complainant;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant alleges that Respondent has not been commonly known by the disputed domain name, and therefore has not demonstrated rights or legitimate interests under Policy ¶ 4(c)(ii). The Panel notes that the WHOIS information for <citadelworld.com> lists Anthony N. Georgiuo as the registrant. Complainant also argues that it has not granted Respondent any license or permission to use the CITADEL mark. The Panel notes that panels have historically found such lack of authorization, combined with unsupportive WHOIS information, to be evidence that a respondent was not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii) given that Respondent is not commonly known by the <citadelworld.com> domain name.
(e) Complainant additionally argues that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, and therefore fails to demonstrate rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant notes that the disputed domain name resolves to a website that has been flagged by anti-virus software as unsafe. See Complainant Exhibit D. Past panels have found that the use of a disputed domain name to host malicious software is evidence of a lack of legitimate rights or interests. See Baker v. J M, FA 1259254 (Nat. Arb. Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). Therefore, the Panel finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent has registered and is using the <citadelworld.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Complainant asserts that the disputed domain name resolves to a website offering services in competition with those offered under Complainant’s marks, which disrupts Complainant’s business. See Complainant Exhibit E. The Panel notes that past panels have indeed found such competitive disruption to be evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See 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). As the Panel finds that Respondent is acting to disrupt Complainant’s business, it finds that that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant also alleges that by offering competing services, Respondent demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv), by intentionally creating confusion with Complainant’s CITADEL mark to attract Internet users to Respondent’s disputed domain name for commercial gain. Complainant contends that Respondent attempts to divert consumers to the disputed domain name so that Respondent may unfairly compete with Complainant. The Panel notes that past panels have found such competing uses to represent evidence of bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Accordingly, the Panel finds that Respondent has shown bad faith registration and use by intentionally attempting to attract users to <citadelworld.com> for commercial gain by creating a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant asserts that its trademark registrations for the CITADEL mark existed before the registration of the disputed domain name. The Panel notes that Complainant’s OHIM registration for the CITADEL mark (Reg. No. 002170009 registered August 2, 2002) does predate the disputed domain name’s creation by two months. Complainant argues that Respondent had knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CITADEL and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citadelworld.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 4, 2013
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