Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v. Paul SIska / Leadfort, LLC
Claim Number: FA1807001798015
Complainant is Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Paul SIska / Leadfort, LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelcrex.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 23, 2018; the Forum received payment on July 24, 2018.
On July 24, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citadelcrex.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@citadelcrex.com. Also on July 27, 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 timely response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. The Respondent did submit a Response on August 21, 2018, which was five days after the deadline. In the exercise of my discretion I will consider the Response.
On August 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant registered the CITADEL mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,213,943, registered Feb. 27, 2007). Respondent’s <citadelcrex.com>[i] domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark before appending the abbreviation “CREX” (“crypto” + “exchange”) and the “.com” generic top-level-domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <citadelcrex.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the CITADEL mark.
3. Respondent registered and uses the <citadelcrex.com> domain name in bad faith. Respondent’s appropriation of Complainant’s mark into a confusingly similar domain name disrupts Complainant’s business.
4. Respondent had actual knowledge of Complainant’s rights in the CITADEL mark prior to registration of the domain name.
B. Respondent
1. Citadel is a generic name which dates to the 16th century in its present form and to Roman times in its original form.
2. In establishing Respondent’s name, the consideration had nothing to do with the Complainant’s company and all to do with the security that a citadel conveys for a technology cryptographic business.
3. Complainant asserts and presumes that Respondent will compete in the financial services space; whereas Respondent is in the technology financial space.
4. Respondent has not used the domain name with the sole purpose “to promote fraudulent investment opportunities.”
5. Respondent did not register the domain in bad faith or to “sell” the domain for consideration beyond out-of-pocket costs.
C. Complainant’s Additional Submission
1. Citadel is not a common name for financial services.
2. Respondent has not made any attempt to establish its rights or legitimate interests in the use of the domain name.
3. Respondent’s description of cryptocurrency clearly falls into the category of financial services and investment of funds.
4. Respondent does not deny that Respondent registered the <citadelcrex.com> domain name despite knowledge of the CITADEL mark.
5. Respondent fails to refute that use of a privacy service to conceal its identity does not constitute evidence of bad faith.
On August 21, 2018, the Forum received a substantive Response from Respondent. As this Response was received after the deadline of August 16, 2018, the Forum does not consider the Response to be in compliance with ICANN Rule 5. However, the Panel, in its discretion, has chosen to accept and consider this Response. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”). With the consent of the Panel, the Forum gave Complainant until August 27, 2018 to provide an additional submission pursuant to Forum Supplemental Rule 7(a). Complainant did provide a conforming Additional Submission on August 23, 2018. Respondent was given the opportunity to reply to Complainant's additional submission within five calendar days, pursuant to Forum Supplemental Rule 7(c). Respondent did not provide an Additional Submission.
Complainant holds trademark rights for the CITADEL mark. Respondent’s domain name is confusingly similar to Complainant’s CITADEL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <citadelcrex.com> domain name and that Respondent registered and uses the domain name 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.
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.”).
Complainant has rights in the CITADEL mark based upon registration with the USPTO (e.g. Reg. No. 3,213,943, registered Feb. 27, 2007). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Accordingly, the Panel holds that Complainant has established rights in the CITADEL mark.
Next, Complainant argues that Respondent’s <citadelcrex.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark before appending the abbreviation “CREX” (“crypto” + “exchange”) and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); 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 finds that the <citadelcrex.com> domain name is confusingly similar to the CITADEL mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <citadelcrex.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The Complainant having made a prima face showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the domain name. That may be done in one of three ways: proof that Respondent (1) has used or has demonstrable preparations to use the domain name, (2) has been commonly known by the domain name, or (3) is making a legitimate noncommercial or fair use of the domain name. Thus, it is Respondent’s burden
to show by concrete evidence that it has rights or legitimate interests in respect of the domain name at issue. See, e.g., Policy, ¶ 4(c). Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. "'Concrete evidence' constitutes more than mere personal assertions. . . . Evidence in the form of documents or third party declarations should be furnished in support of such assertions." Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, at ¶ ¶ 6.12 and 6.14.
Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (Jan. 3, 2002).
Respondent’s late Response, albeit accepted, and failure to submit a further submission despite having the opportunity to do so, leave the record lacking completely in any evidence whatsoever to meet Respondent’s burden. Because Respondent has offered no evidence, other than unsupported “mere personal assertions” to establish its rights or legitimate interests in the <citadelcrex.com> domain name, the Panel concludes that Respondent lacks rights or legitimate interests in the domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s appropriation of Complainant’s mark into a confusingly similar domain name disrupts Complainant’s business. Appropriation of a complainant’s name and mark into a domain name and resolving website may be considered bad faith pursuant to Policy ¶ 4(b)(iii) and need not be commercial. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant provides screenshot evidence of the resolving website. The Panel agrees with Complainant and finds Respondent registered and uses the <citadelcrex.com> domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant further argues Respondent had actual knowledge of Complainant’s rights in the CITADEL mark prior to registration of the <citadelcrex.com> domain name. Actual knowledge is sufficient for a finding of bad faith pursuant to 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.”). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the CITADEL mark based upon Respondent’s registration of a domain name incorporating the mark of Complainant’s large, well-known, financial services company with many registrations in the U.S. and all around the world. Moreover, Respondent has not contested this argument in its Response. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <citadelcrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 31, 2018
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