Citizens Financial Group, Inc. v. yangzhichao
Claim Number: FA1705001730806
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by Robert M. O'Connell of Fish & Richardson P.C., Massachusetts, USA. Respondent is yangzhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citizensonestudentloans.com>, registered with 22net, Inc.
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 here as Panelist.
Complainant submitted a Complaint to the Forum electronically May 9, 2017; the Forum received payment May 9, 2017.
On May 9, 2017, 22net, Inc. confirmed by e-mail to the Forum that the <citizensonestudentloans.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 22net, Inc. verified that Respondent is bound by the 22net, Inc. 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 May 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@citizensonestudentloans.com. Also on May 12, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here 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 issues 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 Allegations in this Proceeding:
Complainant registered its CITIZENS ONE STUDENT LOANS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,864,344, filed Oct. 24, 2014, registered Dec. 1, 2015), and has rights in the marks under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 5. The disputed domain name, Respondent’s <citizensonestudentloans.com> is identical or confusingly similar to Complainant’s mark because it simply eliminates the spaces and appends the generic top-level domain (“gTLD”) “.com” to the fully incorporated CITIZENS ONE STUDENT LOANS mark.
Respondent has no rights or legitimate interests to the disputed domain name. Complainant did not license or otherwise authorize Respondent to use its CITIZENS ONE STUDENT LOANS mark in any way, and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. 2. (WHOIS information). Respondent used the domain name to resolve to a webpage displaying pay-per-click hyperlinks. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent registered and is using the <citizensonestudentloans.com> in bad faith. Respondent has at least five bad faith domain name registrations, a number sufficient to find that Respondent has a pattern of lost UDRP cases. E.g., Time Warner Inc. v. yangzhichao, FA1611001701934 (Forum Dec. 14, 2016). Respondent knew of Complainant’s rights in the CITIZENS ONE STUDENT LOANS mark at the time of registration. Bad faith disruption is further evidenced by Respondent’s use of the resolving webpage to display hyperlinks that compete with Complainant’s business.
B. Respondent’s Allegations in this Proceeding:
Respondent did not submit a Response. However, the Panel notes that Respondent registered the disputed domain name July 3, 2015, some two days after authorities granted Complainant’s registration, which had been filed in October of the prior year.
Complainant established that it has rights and legitimate interests in the disputed domain name due to the mark contained in its entirety within it.
Respondent has no such rights or legitimate interests in the mark or the disputed domain name using the mark of another whose rights in the mark were known to Respondent.
Respondent registered a domain name that is identical but for punctuation and confusingly similar in any respect to Complainant’s protected mark.
Respondent lost earlier UDRP actions showing that he infringed on the protected marks of others and his actions here support the Panel’s finding that he registered and used Complainant’s protected mark 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 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(f), 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 (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.”).
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors that previous panels have seen as particularly compelling are: WHOIS information that establishes that Respondent is in a country that would demonstrate familiarity with the English language, filing of a trademark registration with an entity that shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese and English languages included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent understands and uses the language). Further, the Panel weighs the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Therefore, the Panel chooses to rule as follows:
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely probability that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Identical or Confusingly Similar:
Complainant registered its CITIZENS BANK STUDENT LOANS mark with the USPTO (Reg. No. 4,864,344, filed Oct. 24, 2014, registered Dec. 1, 2015), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 5. A USPTO registration confers rights in a mark. T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Further, rights in a registered mark date back to a mark’s filing date. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1 1589962 (Forum Jan. 1, 2015) (“The Panel finds that Complainant’s valid registration with the USPTO demonstrates Complainant’s rights in the CHEAPCARIBBEAN.COM mark, and that such rights extend back to the Feb. 7, 2007 filing date.”). Thus, the Panel finds that Complainant has rights in the CITIZENS BANK STUDENT LOANS mark under Policy ¶ 4(a)(i), and that such rights date back to the mark’s filing date of October 24, 2014.
Next, Complainant argues the disputed domain name that Respondent registered, <citizensonestudentloans.com>, is identical or confusingly similar to Complainant’s mark because it merely eliminates the spaces, includes an additional letter and appends the gTLD “.com” to the fully incorporated mark. The elimination of spaces and addition of a gTLD is irrelevant when distinguishing between a mark and disputed domain name. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.). The Panel notes that the disputed domain name differs from Complainant’s mark by the elimination of spaces between terms and the addition of the gTLD “.com”. Therefore, the Panel finds that <citizensonestudentloans.com> is identical and confusingly similar to Complainant’s mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing in its entirety Complainant’s protected mark and which is both identical to and confusingly similar to that 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 (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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its CITIZENS ONE STUDENT LOANS mark in any fashion. Where no evidence in the record shows that a Complainant authorized a Respondent to use complainant’s mark in a domain name, the Panel may use such lack of information in making determinations in the case. Lack of information evidences lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. 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). The Panel notes that the <citizensonestudentloans.com> WHOIS information lists “YANGZHICHAO” as the registrant. See Compl., at Attached Ex. 5. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, <citizensonestudentloans.com>.
Next, Complainant argues that Respondent does not make any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because the resolving webpage displays pay-per-click hyperlinks that compete with Complainant’s business. Using a disputed domain name to display hyperlinks that compete with complainant’s business cannot be construed as a bona fide offering of goods or services. 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.”). Here, Complainant provided screenshot evidence of the competing hyperlinks on the disputed domain name’s resolving website. See Compl., at Attached Ex. 7. The Panel notes that the <citizensonestudentloans.com> resolving webpage displays hyperlinks such as “Citizens Bank Student Loans,” “First Citizens Bank,” and “Line Bank.” Id. Therefore, the Panel agrees that sufficient evidence supports a finding that Respondent makes no bona fide offering of goods or services and no legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (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 containing in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent registered and used the disputed domain name in bad faith. First, Complainant notes that several UDRP decisions found Respondent to have acted in bad faith. A history of bad faith creates a pattern of bad faith sufficient to support findings of bad faith under Policy ¶ 4(b)(ii) in the instant case. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant notes the following decisions against Respondent: Time Warner Inc. v. yangzhichao, FA1611001701934 (Forum Dec. 14, 2016); Cerner Corporation v. yangzhichao, FA1607001685754 (Forum Sept. 6, 2016); Transamerica Corporation v. yangzhichao, FA1605001674974 (Forum Jun. 14, 2016); Cerner Corporation v. yangzhichao, FA1512001653943 (Forum Feb. 16, 2016); and Independence Blue Cross, LLC v. yangzhichao, FA1506001625854 (Forum Jul. 31, 2015). While Respondent has at least five (5) UDRP bad faith decisions against it, and has not provided evidence as to factual circumstances in this dispute, the Panel finds that Respondent engaged contrary to the requirements of Policy ¶ 4(b)(ii) when it registered and used <citizensonestudentloans.com>.
Next, Complainant reaffirms that the resolving website is arranged to offer services that compete with Complainant. Inclusion of elements—such as hyperlinks—on a resolving website that competes with a complainant may be found in bad faith under Policy ¶ 4(b)(iii). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)). See Exhibit 7 and the links included thereon. The Panel finds that Respondent’s inclusion of links that refer to loan service providers presumably leads Internet users to competitors, and away from Complainant (for whom they may have initially been searching), and therefore Respondent’s conduct disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant and its student loan services, it is inconceivable that Respondent could have registered the <citizensonestudentloans.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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.").
However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant created significant good will and consumer recognition worldwide as a banking entity for some 200 years, although the CITIZENS ONE STUDENT LOANS mark is relatively new. Notwithstanding, Respondent has shown no right to use Complainant’s protected mark in any way. See Compl., at Attached Ex. 3. Respondent’s communications with Complainant are also evidence of Respondent’s actual knowledge. Therefore, due to the fame of Complainant, its services as a student loan provider and it’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when registering and using <citizensonestudentloans.com>.
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN P 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 <citizensonestudentloans.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 19, 2017
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