Citigroup Inc. v. Maryia Balschun
Claim Number: FA1701001710650
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Maryia Balschun (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.xyz>, registered with Uniregistrar Corp.
The undersigned Daniel B. Banks, Jr., 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.
Complainant submitted a Complaint to the Forum electronically on January 4, 2017; the Forum received payment on January 4, 2017.
On January 6, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <citi.xyz> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 January 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2017 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.xyz. Also on January 11, 2017, 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 January 30, 2017.
An Additional Submission was received from Complainant on February 3, 2017.
An Additional Submission was received from Respondent and deemed to be timely filed.
On February 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the CITI mark globally in connection with its business in multinational banking and financial services. Complainant owns the CITI mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3441460, registered June 3, 2008). The disputed domain name is confusingly similar to Complainant’s CITI mark, as Respondent simply adds the top-level domain (“TLD”) “.xyz.”
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as evidenced by the available WHOIS information. Further, Respondent is neither licensed nor authorized to use Complainant’s CITI mark. Additionally, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent previously used the disputed domain name to offer commercial travel booking and comparison services links. Furthermore, Respondent now uses the disputed domain name as a Wix.com affiliate, featuring Wix.com content and advertisements. Finally, the disputed domain name was also previously available for sale.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent previously offered the disputed domain name up for sale, indicating bad faith under Policy ¶ 4(b)(i). Next, Respondent has only used the disputed domain name to attract Internet users away from Complainant and to offer travel booking services, through which Respondent presumably gains. Finally, due to Complainant’s multiple trademark registrations and the fame of Complainant, Respondent must have had actual and/or constructive knowledge of Complainant and its rights in the CITI mark prior to registering the disputed domain name.
B. Respondent
Many other companies throughout the world use the term “citi” in their businesses. Further, the disputed domain name is made up of a generic term.
Respondent uses the disputed domain name for the only purpose of operating a hotel directory and it will remain for that purpose. This usage does not overlap with any of Complainant’s businesses. Accordingly, the term “citi” or “city” is very appropriate for Respondent’s use.
Respondent has always clearly refused selling the domain name, as evidenced by an email to Complainant. In fact, Respondent was never involved with the previous usage of the disputed domain name, thus it should not be held accountable for those actions. Further, Respondent’s usage in no way overlaps with Complainant’s business, thus it could not be using the disputed domain name to attract Internet users away from Complainant for its own commercial gain. Additionally, the Wix.com advertisements are present only because Respondent is using a free rate for a hosting plan, rather than a paid service, which would remove the advertisements. Respondent does not earn any money through these advertisements.
C. Complainant Additional Submissions
Respondent claims that Complainant has no rights over the CITI mark in Germany. However, Complainant has rights in the mark additionally through trademark registrations with the European Union’s Office for Harmonization in the Internal Mark (“OHIM”) (e.g., Reg. No. 010337061, registered December 7, 2012). Further, Complainant’s <citibank.de> demonstrates Complainant’s presence in Germany.
Respondent claims that its use of the disputed domain name in no way coincides with Complainant’s business. However, Complainant already offers worldwide cobranded travel credit cards and travel rewards, including luxury hotel privileges. Thus, Respondent’s travel and hotel links do in fact, coincide with Complainant’s business.
Finally, Respondent claims that it had no connection with the previous ownership, thus it could not control prior offers for sale of the disputed domain name. However, Respondent had control of the disputed domain name from October 2015 until at least July 20, 2016, where offers for sale persisted.
D. Respondent Additional Submissions
Complainant does not own a trademark for "citi" in Germany. Complainant cannot collect with their trademark all domain names from other parts of the world.
Respondent has legitimate interest in the disputed domain name. Citi is a generic term in many languages. And, contrary to Complainant's claim, Respondent did not target the Citi trademark. It is obvious from the website appearance that there is no interference with the business area of Citigroup. Citigroup offers worldwide cobranded credit cards and travel rewards. Citi.xyz is offering cheap hotel rooms not connected to any financial service.
The domain name was not registered and used in bad faith. Respondent has never had the intention to interfere with Complainant's business. The disputed domain name has never generated any potential conflict with Complainant's trademark.
1 - The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name has been registered and is being used 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.
Complainant argues that the <citi.xyz> domain name is confusingly similar to the CITI mark under Policy ¶ 4(a)(i), as Respondent has simply attached the TLD “.xyz.” Complainant argues that this addition is insignificant under Policy ¶ 4(a)(i). Generally, panels have agreed with such arguments. See Kellog North America Company v. Private Registration, FA 1613347 (Forum June 2, 2015) (finding that the <kelloggs.xyz> domain name is identical to the complainant’s KELLOGG’S mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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 (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 (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 lacks rights or legitimate interests in the disputed domain name. To begin, Complainant notes that Respondent is not commonly known by the disputed domain name. In so arguing, Complainant asserts that Respondent is neither licensed nor authorized to use Complainant’s CITI mark. Further, Complainant points to the WHOIS information, which lists “Maryis Balschun” as registrant of the disputed domain name. The Panel agrees with Complainant’s assertions and the given evidence and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Additionally, Complainant argues that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Complainant notes that Respondent uses and has used the disputed domain name to offer links to travel booking services. Complainant argues that, while such services are unrelated to Complainant’s business, Complainant also offers world-wide co-branded travel credit cards and travel rewards, including luxury hotel privileges. Thus, Respondent’s travel and hotel links do in fact, coincide with Complainant’s business. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Accordingly, the Panel agrees that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
Additionally, while Complainant primarily makes this argument under Policy ¶ 4(a)(iii) bad faith, the Panel also considers that Respondent previously offered the disputed domain name up for sale. Complainant has provided evidence of such behavior. The Panel considers this as additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. First, Complainant reiterates that Respondent has previously placed the domain name up for sale. Complainant notes in its additional submission that even though Respondent claims it had no connection with the previous ownership and prior offers for sale of the disputed domain name, Respondent did have control of the disputed domain name from October 2015 until at least July 20, 2016, where offers for sale persisted. The Panel agrees that Respondent offered the disputed domain name for sale, and therefore finds that Respondent acted in bad faith under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”).
Next, Complainant argues that Respondent uses the disputed domain name to intentionally attract Internet users away from Complainant and its business to Respondent’s own website, presumably for Respondent’s commercial gain. Typically, panels have found that a respondent using competing and/or unrelated links to divert Internet users away from a complainant for its own commercial gain indicated bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum August 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel agrees with Complainant’s version of Respondent’s behavior, and finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
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.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: February 16, 2017
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