Citigroup Inc. v. Domain MANAGER / Domain Brokers
Claim Number: FA1505001621817
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Domain MANAGER / Domain Brokers (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citicardsthankyou.com>, registered with BigRock Solutions Ltd.
The undersigned certifies that she 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 Forum electronically May 28, 2015; the Forum received payment May 29, 2015.
On May 30, 2015, BigRock Solutions Ltd; confirmed by e-mail to the Forum that the <citicardsthankyou.com> domain name is registered with BigRock Solutions Ltd; and that Respondent is the current registrant of the name. BigRock Solutions Ltd; verified that Respondent is bound by the BigRock Solutions Ltd; registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2015, 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@citicardsthankyou.com. Also on June 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" 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 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’s Contentions in this Proceeding:
B. Respondent’s Contentions in this Proceeding:
Complainant established legal rights and legitimate interests in the CITI THANKYOU mark contained in its entirety in the disputed domain name.
Respondent has shown no such rights or legitimate interests in the mark or
domain name.
The disputed domain name is confusingly similar to the Complainant’s protected mark.
Respondent registered and uses the disputed domain name containing Complainant’s protected mark to wrongly phish for confidential information from those who most likely believe that they are dealing 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."
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.
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.”).
Identical to or Confusingly Similar:
Complainant established rights in the CITI THANKYOU mark through registration of the mark with the USPTO (Reg. No. 3,956,034, registered May 3, 2011). Panels routinely hold that registration of a mark with a trademark agency, such as the USPTO, is sufficient to establish a complainant’s rights in a mark under the Policy. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel accordingly finds that Complainant established rights in the CITI THANKYOU mark pursuant to Policy ¶ 4(a)(i).
Complainant further contends that Respondent’s disputed <citicardsthankyou.com> domain name is confusingly similar to Complainant’s CITI THANKYOU mark. The Panel notes that the disputed domain name merely adds the descriptive word “cards” and the generic top-level domain “.com.” Complainant urges that these differences do not prevent a finding of confusing similarity. Addition of gTLDs and words descriptive of a complainant’s business do not prevent a finding of confusing similarity. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Thus, this Panel finds that Respondent’s disputed <citicardsthankyou.com> domain name is confusingly similar to Complainant’s CITI THANKYOU mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant argues that it has not authorized Respondent to use Complainant’s marks in any manner. Further, no information, including relevant WHOIS information, points to Respondent as being commonly known by the <citicardsthankyou.com> domain name. See Complainant’s Att. Ex. B. WHOIS information indicates that the registrant of the disputed domain name, presumably Respondent, is “Domain Manager.” Panels have often found that a respondent is not commonly known by a disputed domain name based on WHOIS and other information. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). This Panel finds that under Policy ¶ 4(c)(ii) the Respondent is not commonly known by the disputed domain name.
Complainant claims that Respondent uses the disputed domain name to phish for a visitor’s personal information and that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes Complainant’s Attached Exhibit E, which shows the disputed domain name as resolved by Complainant on May 13, 2015. The Exhibit shows a popup window encouraging users to take part in a survey after which they will be given a reward. Presumably, to receive the reward, Internet users must enter personal information. Panels have held that a respondent’s use of a disputed domain name to phish for user’s information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent’s presumed use of the disputed domain name to phish for user’s personal or financial information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Irrespective of Respondent’s presumed use of the disputed domain name to phish for personal information, it is clear that Respondent encourages users to fill out a survey. Panels have found that a respondent’s disputed domain name resolving to a website that encourages users to complete a survey is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel therefore holds that Respondent’s use of the disputed domain to prompt users to complete a survey is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Respondent’s disputed <citicardsthankyou.com> domain name resolves to a website that encourages users to participate in a survey for which they will be rewarded upon completion. See Complainant’s Att. Ex. E. Using a confusingly similar domain name to host a survey for the respondent’s benefit constitutes bad faith. See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that, where a disputed domain name offers incentives for the completion of surveys, “Internet users are likely to believe that such activities are sponsored by or affiliated with Complainant and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”). The Panel finds that Respondent commercially benefited from hosting a survey on a confusingly similar domain name and such conduct supports findings of bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s apparent use of the disputed domain name to resolve to a phishing website is evidence of bad faith. The Panel again notes Complainant’s Attached Exhibit E to see what appears to be an attempt to encourage users to take a survey at the end of which they will presumably be prompted to enter their personal information. Where a confusingly similar domain name is used to acquire personal or financial information, such phishing supports findings of bad faith registration and use. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). The Panel here finds that Respondent’s presumed use of the disputed domain name to phish for personal and financial information is evidence of bad faith under Policy ¶ 4(a)(iii).
Further, Complainant claims that Respondent’s attempt to pass the disputed domain name off as one affiliated with Complainant demonstrates bad faith. Respondent’s disputed domain name resolves to a website that repeatedly uses Complainant’s CITIBANK mark and a popup refers to the user as “Citibank Visitor.” See Complainant’s Att. Ex. E. Panels have found bad faith where a respondent attempted to pass itself off as a complainant. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). The Panel notes that Respondent’s disputed domain name includes a disclaimer attesting to a lack of affiliation with Complainant. Panels have found that disclaimers do not prevent a finding of bad faith. See Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel finds that Respondent acted in bad faith under Policy ¶ 4(a)(iii) through passing itself off as Complainant.
Complainant asserts that its trademark registrations for the CITIBANK THANKYOU mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, this 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; 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 <citicardsthankyou.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 13, 2015
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