Citigroup Inc. v. dong huang / freedom
Claim Number: FA1512001652703
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, Washington D.C., United States. Respondent is dong huang / freedom (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citigroup.club>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2015; the Forum received payment on December 16, 2015.
On December 16, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citigroup.club> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 December 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2016 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@citigroup.club. Also on December 16, 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 January 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 contends as follows:
Complainant is an American multinational banking and financial services corporation headquartered in New York, New York. As of 2014, Complainant was the fourteenth largest bank holding company in the world by assets and the seventh largest by market capitalization.
Complainant has registered the CITIGROUP mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,406,753, registered November 21, 2000), which demonstrates Complainant’s rights in its mark.
The <citigroup.club> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and adds the generic top-level domain “.club.”
Respondent should have received a Trademark Claims Notice prior to registering the disputed domain name, and was required to have affirmatively acknowledged the Notice in order to proceed with the registration of the domain name, putting Respondent on actual notice of Complainant’s rights with respect to the Complainant’s trademarks. The Trademark Claims Notice would have stated: “You have receive this Trademark Notice because you have applied for a domain name which matches at least one trademark record submitted to the [TMCH],” and “if you continue with this registration, you represent that, you have received and you understand this notice and to the best of your knowledge, your registration and use of the requested domain name will not infringe on the trademark rights listed below.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making, nor has it made, a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name originally resolved to a parked page that hosted competing hyperlinks, but currently resolves to an “under construction” page.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent’s initial use of the disputed domain name to sponsor pay-per-click advertising links constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Second, Respondent’s current failure to make any active use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in its CITIGROUP mark.
Complainant’s rights in its relevant trademark precede Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent is not commonly known by the at-issue domain name.
Respondent does not use the at-issue domain name in connection with a bona fide business nor in association with a non-commercial or fair use.
Respondent received an express notification regarding Complainant’s registered trademark for CITIGROUP before registering the at-issue domain name.
Respondent’s <citigroup.club> domain name originally addressed a parked webpage that hosted competing pay-per-click hyperlinks, but currently resolves to an “under construction” page.
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.”).
Respondent’s <citigroup.club> domain name is identical to a trademark in which Complainant has rights.
Complainant’s registration of its CITIGROUP mark with a federal trademark authority like the USPTO is sufficient to establish its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). It is immaterial that Complainant may have registered its mark in a jurisdiction other than one in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s at-issue domain name contains Complainant’s mark in its entirety with the top-level domain name “.club” appended thereto. It is well settled that the affixation of a top-level domain name to a mark is irrelevant to Policy ¶ 4(a)(i) analysis. Therefore the Panel finds that Respondent’s <citigroup.club> domain name is confusingly similar to Complainant’s CITIGROUP trademark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain names lists “dong huang freedom” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <citigroup.club> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s at-issue <citigroup.club> domain name originally resolved to a parked page that displayed competing hyperlinks, but currently resolves to an “under construction” page. Using a domain name that is virtually identical to Complainant’s trademark in this manner constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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)); see also, Hewlett-Packard Co. 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)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent registered the <citigroup.club> domain name in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances, as well as other circumstances, are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding Policy ¶ 4(a)(ii), Respondent has used the domain name to address a webpages that displays multiple pay-per-click hyperlinks. At least some of those links referenced websites offering products or services that compete directly with those of Complainant. Such use of the domain name demonstrates Respondent’s bad faith registration and use of the at-issue domain name pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Furthermore, it is apparent that Respondent registered the <citigroup.club> domain name knowing that Complainant had trademark rights in the CITIGROUP mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s unique and world known trademark as well as from the fact that a TMCH Trademark Claims Notice was likely presented to Respondent at a time before Respondent registered the domain name. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <citigroup.club> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citigroup.club> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 7, 2016
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