Citizens Financial Group, Inc. v. Xiaolei Wang
Claim Number: FA1805001786381
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by Robert O'Connell of Fish & Richardson P.C., Massachusetts, USA. Respondent is Xiaolei Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citizensbankeverydaypoint.com> and <citizenbankeverydaypoints.com> (the “Domain Names”), registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2018; the Forum received payment on May 14, 2018.
On May 14, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <citizensbankeverydaypoint.com> and <citizenbankeverydaypoints.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 May 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@citizensbankeverydaypoint.com, postmaster@citizenbankeverydaypoints.com. Also on May 17, 2018, 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 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
Over forty years ago Complainant adopted and began to use in commerce the CITIZENS BANK trade mark for its banking services and has continuously used this trade mark in United States commerce since that time. CITIZENS BANK & design has been registered as a trade mark in the USA since 2002.
Complainant publicly launched the EVERYDAY POINTS mark in United States commerce on or about 1 February 2007. Complainant registered the domain <citizensbankeverydaypoints.com> on 2 September 2008 and has used it since at least January 2011 for a customer facing web site. EVERYDAY POINTS has been registered in the USA since 2008.
The Domain Names are nearly identical to Complainant’s marks as each omits the letter ‘s’ either at the end of ‘citizens’ or ‘points’. Both marks have been included to associate the Domain Names with Complainant.
Respondent has no rights or legitimate interests in the Domain Names. It is not commonly known by the Domain Names and has not been authorised by Complainant to use Complainant’s marks.
The Domain Names have been used to point to pay per click links to services that compete with Complainant. That cannot be bona fide use or a legitimate non commercial fair use.
In fact it is evidence of bad faith under Policy 4 (b)(iii) and (iv). The fact that Respondent registered two domain names which feature one of Complainant’s trade marks and one misspelling of another shows Respondent had actual knowledge of Complainant and its business.
Typosquatting is also evidence of bad faith by itself.
Respondent has been the subject of at least two prior UDRP proceedings where it has lost.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Over forty years ago Complainant adopted and began to use in commerce the CITIZENS BANK trade mark for its banking services and has continuously used this trade mark in United States commerce since that time. CITIZENS BANK & design has been registered as a trade mark in the USA since 2002.
Complainant publicly launched the EVERYDAY POINTS mark in United States commerce on or about 1 February 2007. Complainant registered the domain <citizensbankeverydaypoints.com> on 2 September 2008 and has used it since at least January 2011 for a customer facing web site. EVERYDAY POINTS has been registered in the USA since 2008.
The Domain Names registered in 2018 have been pointed to pay per click links pointing to services that compete with those of Complainant.
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 or Confusingly Similar
Citizensbankeverydaypoint.com consists of Complainant's CITIZENS BANK mark (which is registered, inter alia in USA for financial services with first use recorded as 1976), a misspelling of Complainant’s mark EVERYDAY POINTS (which is registered in the USA for financial services and has been used since 2007) omitting the ‘s’ and the gTLD .com.
<Citizenbankeverydaypoints.com> consists of a misspelling of Complainant's CITIZENS BANK mark (which is registered, inter alia, in USA for financial services with first use recorded as 1976) omitting the ‘s’ and Complainant’s trade mark EVERYDAY POINTS (which is registered in the USA for financial services and has been used since 2007) and the gTLD “.com.”
The Panel agrees with Complainant that combining two marks associated with Complainant with slight differences such as a removal of a space or letter does not distinguish the Domain Names from Complainant's trade marks pursuant to the Policy. In addition the Domain Names are both very similar to a domain name used by Complainant for a customer facing web site.
The gTLD “.com” does not serve to distinguish the Domain Name from the CITIZENS BANK or EVERYDAY POINTS marks. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy to Complainant’s marks.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its marks. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site to which the Domain Names redirects has contained links to financial services in competition with those of Complainant. It did not make it clear that there was no commercial connection with Complainant. The Panel finds this use is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services.
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Names and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Names in relation to the competing links is confusing and disruptive in that visitors to the site might reasonably believe they are connected to or approved by Complainant as it links to competing financial services under Domain Names containing the Complainant’s marks or misspelling of Complainant’s marks owned by a member of its group. The use of a combination of one of Complainant’s marks with a misspelling of another of Complainant’s marks for competing financial services shows that it is highly likely that Respondent was aware of Complainant and its business at the time of registration of the Domain Names. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites likely to disrupt the business of Complainant. (See Allianz of Am. Corp v Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own web site and likely profiting).
Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the complainant’s mark and be taken to the respondent’s site is registration and use in bad faith).
As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paras 4(b)(iv) and 4(b)(iii). It is not necessary to consider any further alleged grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citizensbankeverydaypoint.com> and <citizenbankeverydaypoints.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 15, 2018
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