DECISION

 

Citadel LLC and its related entity KCG IP Holdings LLC v. Jordan Rivers / Jordan Industries ltd / Webber Dennis Richard / Webber Trading PLC

Claim Number: FA1712001764048

PARTIES

Complainant is Citadel LLC and its related entity KCG IP Holdings LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA.  Respondent is Jordan Rivers / Jordan Industries ltd / Webber Dennis Richard / Webber Trading PLC (“Respondent”), Ghana.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info>, registered with NameCheap, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 21, 2017; the Forum received payment on December 21, 2017.

 

On December 21, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names.  NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2018 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@bitcoincitadelinvestment.com, postmaster@bitcoincitadelinvest.com, postmaster@bitcoincitadelinvestment.info.  Also on December 28, 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 January 19, 2018, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

Preliminary Issue: Multiple Complainants

 

In the instant proceedings, there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”  The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”  The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

There are two Complainants in this matter: Citadel LLC and its related entity KCG IP Holdings LLC. Complainant Citadel LLC asserts that it uses the CITADEL trademarks under license from KCG IP Holdings LLC.

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and shall treat them as a single entity in this proceeding.

 

Parties’ Contentions

A.   Complainant

1.    Complainant, Citadel LLC and its related entity KCG IP Holdings LLC, is one of the world’s largest and most sophisticated alternative investment institutions. In connection with this business, Complainant uses the CITADEL mark to promote its goods and services.  Complainant has rights in the CITADEL mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 3,213,943, registered Feb. 27, 2007). See Amend. Compl. Annex 4. Respondent’s <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names are confusingly similar to Complainant’s mark as each wholly incorporates the mark before appending the generic financial terms “bitcoin,” “invest,” and “investment,” as well as the “.com” and “.info” generic top-level-domains (“gTLDs”).

2.    Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent’s use of the CITADEL mark. In addition, Complainant asserts Respondent fails to use the disputed domain names in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use as, instead, the <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names both redirect to <bitcoincitadelinvestment.com>, which Respondent uses to compete with Complainant. See Amend. Compl. Annex 6.

3.    Respondent registered and used the disputed domain names in bad faith. Respondent demonstrates a pattern of bad faith registration and use. Respondent disrupts Complainant’s business. Respondent registered the disputed domain names utilizing a domain name privacy service.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names are confusingly similar to Complainant’s CITADEL and KCG IP marks.

2.    Respondent does not have any rights or legitimate interests in the <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names

3.    Respondent registered or used the <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names in bad faith.

 

DISCUSSION

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 (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.”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the CITADEL mark based upon multiple registrations with the USPTO (i.e. Reg. No. 3,213,943, registered Feb. 27, 2007). See Amend. Compl. Annex 4. Registration with the USPTO is sufficient to establish rights within a mark pursuant to Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the

Policy.”). Thus, the Panel finds Complainant has rights in the CITADEL mark.

 

Next, Complainant asserts Respondent’s <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names are confusingly similar to Complainant’s mark as each wholly incorporates the mark before appending the generic financial terms “bitcoin,” “invest,” and “investment,” as well as the “.com” and “.info” gTLDs. The addition of generic terms and a gTLD to a complainant’s wholly incorporated mark do not sufficiently differentiate the disputed domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.  Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel agrees with Complainant and find Respondent’s disputed domain names are confusingly similar to Complainant’s CITADEL mark per Policy ¶ 4(a)(i).

 

Rights or 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 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 has no rights or legitimate interests in the <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the CITADEL mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel notes that the WHOIS information identifies the registrant of the <bitcoincitadelinvestment.com> domain name as “Webber Dennis Richard / Webber Trading PLC,” and the registrant of the <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names as “Jordan Rivers / Jordan Industries ltd.” See Amend. Compl. Annex 2, 3. Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names under Policy ¶ 4(c)(ii).

 

Next, Complainant asserts Respondent fails to use the disputed domain names in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use as, instead, the <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names both redirect to <bitcoincitadelinvestment.com>, which Respondent uses to compete with Complainant. See Amend. Compl. Annex 6. Use of a disputed domain name to compete with a complainant does not reflect a bona fide use or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(i) & (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Complainant asserts Respondent uses the disputed domain names to offer competing investing services to those provided by Complainant. See Amend. Compl. Annex 6. The Panel agrees with Complainant and find Respondent lacks rights and legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Complainant alleges Respondent disrupts Complainant’s business via competing with Complainant via the disputed domain name. Disrupting a complainant’s business through the use of a confusingly similar disputed domain name to offer products in the same sphere as said complainant constitutes bad faith per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Complainant contends Respondent appropriated Complainant’s CITADEL mark and website design in order to promote and validate fraudulent investment opportunities meant to compete with Complainant. See Amend. Compl. Annex 5, 6. The Panel agrees with Complainant and finds Respondent registered and used the <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com> and <bitcoincitadelinvestment.info> domain names in bad faith per Policy ¶ 4(b)(iii).

 

Last, Complainant argues Respondent had actual knowledge of Complainant’s rights in the CITADEL mark prior to registration of the disputed domain names. The non-exclusive nature of Policy ¶ 4(b) allows for the consideration of additional factors in an analysis for bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Actual knowledge of a complainant’s rights in a mark prior to registration of a disputed domain name is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant asserts Respondent had actual knowledge of Complainant’s rights in the CITADEL mark prior to registration as evidenced by Respondent’s use of the mark in three separate disputed domain names and the appropriation of Complainant’s web design and visual marks on the resolving websites of the disputed domain names. See Amend. Compl. Annex 5, 6. The Panel agrees with Complainant and find further evidence of Respondent’s bad faith registration and use of the disputed domain names.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bitcoincitadelinvestment.com>, <bitcoincitadelinvest.com>, and <bitcoincitadelinvestment.info> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  January 31, 2018