Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group
Claim Number: FA1409001579141
Complainant is Citadel LLC, and its related entity, KCG IP Holdings, LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Joel Lespinasse / Radius Group (“Respondent”), represented by Pierre Peter Mayas, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelfunding.net>, registered with Register.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2014; the National Arbitration Forum received payment on September 11, 2014.
On September 10, 2014, Register.com, LLC. confirmed by e-mail to the National Arbitration Forum that the <citadelfunding.net> domain name is registered with Register.com, LLC. and that Respondent is the current registrant of the name. Register.com, LLC. has verified that Respondent is bound by the Register.com, 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 September 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2014 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@citadelfunding.net. Also on September 11, 2014, 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.
A timely Response was received and determined to be complete on October 1, 2014.
A timely Additional Submission was filed on October 7, 2014.
On October 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonathan Agmon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant, Citadel LLC, was founded in 1990 and it is the world's largest alternative investment institutions. Citadel employs more than 1000 professional worldwide and has offices worldwide.
The Complainant owns the CITADEL mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,213,943 registered February 27, 2007). Complainant uses the mark for financial services, namely investment management services.
The <citadelfunding.net> domain name is confusingly similar to the CITADEL mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information, which identifies “Joel Lespinasse / Radius Group” as the registrant.
The Complainant has not authorized Respondent’s use of the mark.
Respondent is using the disputed domain name to provide services related to financial and investment consulting in competition with Complainant’s efforts in the area.
Respondent has engaged in bad faith. Respondent uses the domain name to offer services in competition with Complainant, which disrupts Complainant’s business.
Respondent uses the confusingly similar domain name to promote services directly in conflict with Complainant in an effort to capitalize on the perceived association of Complainant with the resolving content.
Respondent registered the disputed domain name with knowledge of Complainant’s rights in the CITADEL mark given the fame of the mark.
B. Respondent
The <citadelfunding.net> domain name was registered July 17, 2011.
Respondent performed a complete Internet search to determine whether the “Citadel Funding” name was in use prior to registering this <citadelfunding.net> domain name, but found nothing.
The services offered by Respondent via the <citadelfunding.net> domain name differ from those offered by Complainant, and therefore there is not intent to confuse or a possible confusion.
Respondent did not register the domain name in bad faith.
C. Additional Submissions
A timely Additional Submission was received by Complainant and deemed to be complete on October 7, 2014.
Complainant states that it is simply implausible that Respondent was unaware of Complainant’s existence and extensive trademark rights. Indeed, a recent Google search for CITADEL FUNDING returns at least 7 websites regarding Citadel, LLC on the very first page of the search results.
Complainant further argues that except for the Respondent’s infringing use of CITADEL FUNDING, the first and second references returned from a Google search for CITADEL FUNDING are a Wikipedia article about Complainant and Complainant’s corporate website.
Complainant also argues that Respondent claim to have conducted a “complete Internet search,” and that Respondent was unaware of Citadel LLC’s existence is either intentionally misleading or evidence of gross willful blindness.
Complainant further claims it owns more than ninety trademark registrations for marks containing or comprising the CITADEL designation in countries throughout the world.
Complainant also argues that Respondent’s Offending Domain Name wholly incorporates Complainant’s CITADEL mark and adds the generic or descriptive term “funding”. Past Panels have addressed the addition of the term “funding” and other such generic terms, to a trademark and held that the addition of such generic and descriptive terms to a Complainant’s mark creates a confusing similarity between the disputed domain name and Complainant’s mark.
It has come to Complainant’s attention, that since the filing of its Complaint, Respondent has registered two additional domain names, <citadellefunding.net> and <citadellefunding.com> that wholly incorporate Complainant’s CITADEL mark. The registration of such domain names, after Respondent had actual notice of Complainant’s rights in the CITADEL mark through the Complaint at issue here, is further evidence of Respondent’s bad faith.
Respondent has not made any attempt at establishing rights or a legitimate interest in the domain name.
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.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
Complainant is the owner of more than 90 trademark registrations for marks containing the CITADEL trademark worldwide. The Complainant KCG IP Holdings LLC is the owner of US Trademark Registration No. 3,213,943, filed October 18, 2004, registered February 27, 2007, claiming first use dating back to 1994. Therefore, the Panel concludes that Complainant’s filing and registration of the CITADEL mark with the USPTO sufficiently demonstrates that it has rights in the mark under Policy ¶ 4(a)(i). See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The disputed domain name <citadelfunding.net> is confusingly similar to the CITADEL mark. The disputed domain name fully includes the CITADEL mark with the addition of the generic term “funding,” as well as the generic top-level domain (“gTLD”) “.net.”
The Panel agrees that the additions of a descriptive or generic term and a gTLD fail to distinguish the domain name from the included mark, and therefore find the <citadelfunding.net> domain name confusingly similar to the CITADEL mark under Policy ¶ 4(a)(i). Past panels have addressed the addition of the term “funding” and other such generic terms, to a trademark and held that the addition of such generic and descriptive terms to a Complainant’s mark creates a confusing similarity between the disputed domain name and Complainant’s mark. See Lifeline Funding, LLC v. Zoya Aminova, FA 1443200 (Nat. Arb. Forum June 17, 2012) (finding the <usclaimfunding.com> domain name registered by Respondent was confusingly similar to Complainant’s USCLAIMS mark where the domain name added the generic term “funding” and removed the letter “s” from the end of the mark).
The addition of the gTLD “.net” to the disputed domain name does not avoid confusing similarity. See Guess? IP Holder L.P. and Guess?, Inc. v. JOHN MCCORK, FA 1557430 (Nat. Arb. Forum June 2, 2014) (finding that the addition of the generic top-level domain “.net” did not distinguish Respondent’s domain name from Complainant’s mark, and thus, the domain name was confusingly similar to Complainant’s mark).
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical to the trademarks in which the Complainant has rights.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues Respondent is not commonly known by the disputed domain name. In so arguing, Complainant points to the WHOIS information, which identifies “Joel Lespinasse / Radius Group” as the registrant, to show no association between the disputed name and Respondent. Past panels have looked to the WHOIS record before determining whether or not the Respondent is commonly known by the domain name. See Kevco Intellectual Properties LLC v. Jason Healey, FA 1560838 (Nat. Arb. Forum July 24, 2014) (finding that Respondent was not commonly known by the domain name where Respondent registered the domain name under the name Jason Healy and failed to provide any additional evidence showing that it is known by the disputed domain name). Here, Respondent’s WHOIS information is devoid of any reference to “CITADEL,” further evidencing that Respondent is not commonly known as the Offending Domain, and thus, has no legitimate interest in it.
The Complainant also adds that it has not authorized Respondent’s use of the mark. While the disputed domain name resolves to a webpage with the banner “Citadel Funding LLC” (available for review at Complainant’s Ex. E), the Panel concludes that Respondent has not provided sufficient evidence to indicate the requisite nexus between itself and the <citadelfunding.net> name. For comparison, in Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003), the panel wrote, “[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.” Based on the available evidence, this Panel agrees that Respondent is not commonly known by the <citadelfunding.net> domain name pursuant to Policy ¶ 4(c)(ii).
The Complainant further argues that Respondent is using the disputed domain name to provide services related to financial and investment consulting in competition with Complainant’s own offerings. Complainant has included a screenshot of the disputed domain name for the Panel’s review in Complainant’s Exhibit E. The Panel finds that the disputed domain name resolves to a website operated by “Citadel Funding LLC,” to offer financial consulting services as a “private fund management firm.” See id. Prior panels have concluded that the use of a confusingly similar domain name to offer competing services does not amount to 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). For example, in Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), the panel found that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks. Here, because Respondent is using the <citadelfunding.net> domain name to offer competing financial services, the Panel agrees that such use does not fall within the protections of Policy ¶ 4(c)(i) or (iii).
The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s use of the domain name to offer services in competition with Complainant. Complainant claims such use disrupts Complainant’s business, and therefore implicates Policy ¶ 4(b)(iii).
The Respondent uses the <citadelfunding.net> domain name to offer financial consulting and money management services. See Compl., at Attached Ex. E. The Panel agrees that Respondent’s services are in competition with Complainant’s own efforts in the financial services sector, and therefore conclude that Respondent’s use of the name serves to disrupt Complainant’s business, a violation under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
The Complainant further argues that Respondent has use the disputed domain name in an attempt to capitalize on Complainant’s goodwill to promote competing services. Prior panels have found evidence of Policy ¶ 4(b)(iv) bad faith where the disputed domain name was used to promote a competing service, from which the respondent garnered profit. For example, in MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), the panel found 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. Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.
The Complainant also argues Respondent registered the disputed domain name with knowledge of Complainant’s rights in the CITADEL mark. In so arguing, Complainant notes the fame and notoriety of its mark, and claims that a preliminary trademark search would have revealed Complainant’s rights in the CITADEL mark. Prior panels have generally determined that constructive notice is insufficient to support a finding of bad faith. At present, Respondent claims it did perform a search for any use of “citadel funding,” but encountered no hits to raise concern. This Panel is skeptical of this claim based the present circumstances, such as the full inclusion of the CITADEL mark in the domain name and use of the name in connection with financial management services. However, the Panel did not base the present decision on this point, and the Panel notes that performing a search is not a requirement before seeking registration of a domain name, nor that performing such search would shield a respondent from a finding of bad faith registration and use.
The Panel is of the opinion that it is unlikely that the Respondent was not aware of the Complainant’s rights in the CITADEL mark at the time of registration. Also, in the Additional Submission filed by the Complainant, the Complainant brought a recent Google search for CITADEL FUNDING returns at least 7 websites regarding Citadel, LLC on the very first page of the search results. Except for the Respondent’s infringing use of CITADEL FUNDING, the first and second references returned from a Google search for CITADEL FUNDING are a Wikipedia article about Complainant and Complainant’s corporate website.
Lastly, in the Additional Submission the Complainant found that since the filing of its Complaint, Respondent has registered two additional domain names, <citadellefunding.net> and <citadellefunding.com> that wholly incorporate Complainant’s CITADEL mark (Annex C). The registration of such domain names, after Respondent had actual notice of Complainant’s rights in the CITADEL mark through the Complaint at issue here, is further evidence of Respondent’s bad faith registration and use. Respondent’s claim of acting in innocence is inconsistent with these additional facts.
Therefore, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citadelfunding.net> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: 10/15/2014
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