Citigroup Inc. v. jose vicente gomar llacer / Gandiyork, SL - B98466980
Claim Number: FA1512001652712
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, Washington, D.C., United States. Respondent is jose vicente gomar llacer / Gandiyork, SL - B98466980 (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.land>, registered with GoDaddy.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.
John J. Upchurch 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 <citi.land> 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 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 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@citi.land. Also on December 17, 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 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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’s Contentions
1. 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 CITI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,181,467, registered December 8, 1981), which demonstrates Complainant’s rights in its mark. The Panel is directed to Attached Exhibit D for copies of Complainant’s USPTO registrations. The <citi.land> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CITI mark and merely adds the generic top-level domain (“gTLD”) “.land.”
2. 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 a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name in connection with text and images related to horticulture, crops, and farm animals, content unrelated to Complainant. Moreover, Respondent has offered the domain for sale on Afternic for $3,960.00. Respondent has also offered the domain for sale to Complainant for $625.00, a price in excess of Respondent’s out-of-pocket costs to acquire the domain.
3. Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has offered the domain for sale, a violation of Policy ¶ 4(b)(i). Second, Respondent has engaged in a pattern of registering and using domains in bad faith. Finally, because of the global fame of Complainant’s mark, it is clear that Respondent registered the domain with actual knowledge of the CITI mark.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <citi.land> domain name is confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citi.land> domain name.
3. Respondent registered or used the <citi.land> domain name in bad faith.
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(f), 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.”).
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 CITI mark with the USPTO (e.g., Reg. No. 1,181,467, registered December 8, 1981). Complainant contends that its USPTO registration demonstrates Complainant’s rights in its mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <citi.land> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CITI mark and merely adds the gTLD “.land.” Previous panels have found that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. 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.”). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “jose vicente gomar llacer / Gandiyork, SL - B98466980” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses its disputed domain name in connection with text and images related to horticulture, crops, and farm animals, content unrelated to Complainant. Moreover, Complainant argues that Respondent has offered the domain for sale on Afternic for $3,960.00. According to Complainant, Respondent has also offered the domain for sale to Complainant for $625.00, a price in excess of Respondent’s out-of-pocket costs to acquire the domain. Previous panels have held that a respondent’s use of a domain to divert Internet users to a website unrelated to the 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Moreover, previous panels have held that a respondent lacked rights and legitimate interests where it showed a willingness to sell a domain name for more than its out-of-pocket costs. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges that Respondent has offered the domain for sale, a violation of Policy ¶ 4(b)(i). Previous panels have agreed that a respondent’s attempt to sell a domain for an amount in excess of its out-of-pocket costs to acquire the domain constitutes bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Therefore, the Panel finds that Respondent registered and is using the disputed domain in bad faith per Policy ¶ 4(b)(i).
Complainant contends that Respondent has engaged in a pattern of registering and using domains in bad faith. Complainant cites the following UDRP cases as supporting evidence: Philip Morris USA Inc. v. Jose Vicente Gomar Llacer, Case No. D2014-2264 (WIPO Feb. 25, 2015), Media-Saturn-Holding GmbH v. Gandiyork, SL – B98466980, FA 1552029 (Natl. Arb. Forum Apr. 18, 2014), and Deutsche Lufthansa AG v. Gandiyork, SL – B98466980, FA 1549328 (Natl. Arb. Forum Apr. 14, 2014). Past panels have decided that a respondent’s involvement in prior UDRP proceedings was sufficient evidence of a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Accordingly, the Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).
Finally, because of the global fame of Complainant’s mark, it is clear that Respondent registered the domain with actual knowledge of the CITI mark. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See 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). As such, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citi.land> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 25, 2016
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