Citadel Enterprise Americas LLC v. Paul SIska / Leadfort, LLC,
Claim Number: FA1810001811652
Complainant is Citadel Enterprise Americas LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Paul SIska / Leadfort, LLC (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citadel-crypto.com>, <citadel-crypto.info>, <citadel-crypto.net>, <citadel-crypto.org>, and <citadelcrcapital.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 11, 2018; the Forum received payment on October 15, 2018.
On October 15, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citadel-crypto.com>, <citadel-crypto.info>, <citadel-crypto.net>, <citadel-crypto.org>, and <citadelcrcapital.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 October 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@citadel-crypto.com, postmaster@citadel-crypto.info, postmaster@citadel-crypto.net, postmaster@citadel-crypto.org, postmaster@citadelcrcapital.com. Also on October 18, 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 November 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it was founded in 1990 and has since grown to be one of the world’s largest and most sophisticated alternative investment institutions. It employs more than 1,250 professionals who are located in offices worldwide and it manages many billions of U.S. dollars in assets. Its investors include endowments, pension funds, foundations and other institutional investors, as well as high net worth individuals. Complainant is also a leading market maker, providing liquidity and trade execution to retail and institutional clients, and it is a leader in investment management technology. Complainant registered the CITADEL mark in the United States in 1994.
Complainant alleges that the disputed domain names are confusingly similar to Complainant’s mark as each wholly incorporates the mark before appending hyphens, the generic / descriptive terms “capital,” “crypto,” and “cr” (short for “crypto”), as well as the “.info,” “.net,” “.org,” and “.com” generic top-level-domain names (“gTLDs”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or 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 to use the mark. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent displays a pattern of bad faith registration of disputed domain names containing Complainant’s CITADEL marks. In particular, Respondent registered <citadelcrex.com> which is the subject of Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v. Paul SIska / Leadfort, LLC (FA1807001798015, August 31, 2018) in which the panel issued a decision for transfer. That domain name was used to resolve to an advertisement for “Citadel Crypto Exchange”. Respondent’s inactive holding of the disputed domain names disrupts Complainant’s business. Respondent had actual knowledge of Complainant’s rights in the CITADEL marks prior to registration of the disputed domain names. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark CITADEL and uses it to market investment services.
Complainant’s rights in its mark dates back to 1994.
The disputed domain names were registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names are not being used.
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.”).
The disputed domain names are confusingly similar to Complainant’s mark as each wholly incorporates the mark before appending hyphens, the generic / descriptive terms “capital,” “crypto,” and “cr” (short for “crypto”), as well as the “.info,” “.net,” “.org,” and “.com” gTLDs. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See also King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH mark.”); Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); 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 may therefore finds that the <citadel-crypto.com>, <citadel-crypto.info>, <citadel-crypto.net>, <citadel-crypto.org>, and <citadelcrcapital.com> domain names are confusingly similar to the CITADEL mark under Policy ¶4(a)(i).
Complainant has not authorized Respondent to use its mark in any way. Respondent is not commonly known by the disputed domain name: where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS identifies “Paul SIska / Leadfort, LLC,” as the registrant. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain names are not being used. This can evince a finding that a respondent is not making a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Thus, the Panel finds that Respondent is not making a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, Respondent displays a pattern of bad faith registration of disputed domain names containing Complainant’s CITADEL marks. Specifically, Respondent’s inactive holding of the disputed domain names prevents Complainant from reflecting its marks in the domain space, and Respondent has been the party to an adverse UDRP decision in which the Panel transferred the <citadelcrex.com> domain name from Respondent to Complainant. Registration of multiple domain names containing a complainant’s mark, as well as prior adverse UDRP decisions, can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Thus the Panel finds that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
The disputed domain names are not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Respondent had previously used a confusingly similar domain name to advertise a “Citadel Crypto Exchange”, and this was found to constitute bad faith use of that domain name. Under the circumstances, it is difficult to envisage any use of the disputed domain names that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citadel-crypto.com>, <citadel-crypto.info>, <citadel-crypto.net>, <citadel-crypto.org>, and <citadelcrcapital.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 9, 2018
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