Citigroup Inc. v. 郭丕林
Claim Number: FA1602001660186
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, Washington D.C., USA. Respondent is 郭丕林 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citi.xin> and <citibank.xin>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2016; the Forum received payment on February 9, 2016. The Complaint was received in both English and Chinese.
On February 14, 2016, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <citi.xin> and <citibank.xin> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 February 19, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 10, 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.xin, postmaster@citibank.xin. Also on February 19, 2016, the Chinese language 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 March 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the CITI and CITIBANK marks in connection with its multinational banking and financial services corporation. Complainant has registered the CITI and CITIBANK marks with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,459,488, registered October 14, 2000; Reg. No. 180,123, registered July 5, 1983), which demonstrates rights in the marks. Respondent’s <citi.xin> and <citibank.xin> domain names are identical to the CITI and CITIBANK marks as they each incorporate a mark in its entirety and include no differences other than the specific top-level domain (“sTLD”) “.xin.”
Respondent has no rights or legitimate interests in the <citi.xin> and <citibank.xin> domain names. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <citi.xin> and <citibank.xin> domain names. Rather, the domain names both resolve to websites containing the error message “This webpage is not available.”
Respondent registered and is using the <citi.xin> and <citibank.xin> domain names in bad faith. Respondent made a bad faith offer to sell by inviting Complainant to participate in an online auction to purchase both domain names. Respondent has a pattern of bad faith registration and use as evidenced by the registration of multiple domain names containing Complainant’s marks. Finally, Respondent had actual and constructive notice of the CITI and CITIBANK marks and Complainant’s rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Citigroup Inc. of New York, NY, USA. Complainant owns domestic and international registrations for the marks CITI, CITIBANK, and related marks which it has continuously used since at least as early as 1983 in connection with its offering of hardware, software, educational materials, processing equipment, insurance components, as well as numerous other items related to Complainant’s provision of services and goods in the financial services industry.
Respondent is 郭丕林 of China. Respondent’s registrar’s address is also listed as China. The Panel notes that the disputed domain names were registered on or about September 28, 2015.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 uses the CITI and CITIBANK marks in connection with its multinational banking and financial services corporation. Complainant has registered the CITI and CITIBANK marks with China’s SAIC (e.g., Reg. No. 1,459,488, registered October 14, 2000; Reg. No. 180,123, registered July 5, 1983), which it contends demonstrates rights in the marks. Past Panels have found registration with the China’s SAIC to be sufficient to establish rights in a trademark. See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has established rights in the CITI and CITIBANK marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <citi.xin> and <citibank.xin> domain names are identical to the CITI and CITIBANK marks as they each incorporate a mark in its entirety and include no differences other than the sTLD “.xin.” Prior panels have found the addition of an sTLD to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”). The Panel here finds that Respondent’s <citi.xin> and <citibank.xin> domain names are identical to the CITI and CITIBANK marks under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <citi.xin> and <citibank.xin> domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information regarding the disputed domain name lists “郭丕林” as registrant of record. Complainant asserts that it has not given Respondent permission to use its CITI or CITIBANK marks. The Panel further notes that Respondent has not submitted a Response in this proceeding. In light of the available evidence, the Panel finds no basis to support an assertion that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <citi.xin> and <citibank.xin> domain names. The disputed domain names each resolve to websites that have the error message “This webpage is not available.” Past Panels have found the inactive holding of domain names without demonstrable preparations for use does not constitute rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel here finds that Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s registration and use of the disputed domain names constitutes bad faith under Policy ¶ 4(b)(i). Complainant contends that it offered to pay Respondent out-of-pocket registration costs for each domain name. Complainant further alleges that Respondent refused this offer and subsequently invited Complainant to bid in an auction for the disputed domain names. Complainant states that Respondent then put the disputed domain names up for auction at a started bid of 500,000 yen, or $76,224.74 for each domain name. Previous Panels have found an offer to sell a disputed domain name to evince bad faith registration and use under Policy ¶ 4(b)(i). See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration). The Panel here finds that Respondent’s offer to sell the domain names for an amount far in excess of out-of-pocket costs constitutes a bad faith offer to sell under Policy ¶ 4(b)(i).
Complainant further contends that Respondent has a pattern of domain name misuse as evidenced by the Respondent’s holding of more than one domain name containing Complainant’s marks in this case. Past Panels have found the registration of multiple domain names containing a complainant’s mark to constitute a pattern of domain name misuse per Policy 4(b)(ii). See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”). The Panel here finds that the registration of more than one domain name containing a complainant’s mark constitutes bad faith registration and use under Policy ¶ 4(b)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <citi.xin> and <citibank.xin> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 31, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page