Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v. Vyacheslav Goshmanov
Claim Number: FA1901001827196
Complainant is Citadel Enterprise Americas LLC and KCG IP Holdings LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Vyacheslav Goshmanov (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crypto-citadel.com>, registered with NameCheap, Inc..
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2019; the Forum received payment on January 28, 2019.
On January 28, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <crypto-citadel.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 February 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2019 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@crypto-citadel.com. Also on February 1, 2019, 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 February 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
Preliminary Issue 1: res judicata principle; Re-filing of UDRP Complaint
Complainant claims that it submitted a Complaint to the Forum against the disputed domain name on December 17, 2018 (Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v. Vyacheslav Goshmanov, FA1812001821438; January 20, 2019) (hereinafter referred to as ‘first proceeding’); the relief was denied; the panel in the first proceeding expressly noted that “in the event that further information arises that suggests the motives of the respondent in registering or using the domain name related to the Respondent’s awareness of the Complainant’s CIT[A]DEL mark…there may be grounds to consider a re-filed complaint, subject to the applicable criteria.” Complainant further claims that it submits subsequent proof of bad-faith registration and use that is likely to change the outcome of the initial decision; the panel’s decision in the first proceeding expressly left open the possibility that Complainant could re-file its Complaint upon discovery of additional evidence; the panel in the first proceeding improperly considered and relied upon an informal email response from the respondent, which was not provided to Complainant (and to which Complainant did not have the opportunity to respond); for these reasons, among others, the decision of the first proceeding resulted in a serious miscarriage of justice, and Complainant deserves the opportunity to have its Complaint heard in full, including its reply to the Respondent’s communication referenced above.
The Panel agrees with Complainant and finds that the Complaint is properly re-filed.
Preliminary Issue 2: Multiple Complainants
In the instant proceedings, there are two Complainants in this matter: Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC. Complainants claim that Citadel Enterprise Americas LLC uses the CITADEL trademarks under license from its related entity KCG IP Holdings LLC. Further, Complainant claims past panels have found a sufficient connection between Citadel Enterprise Americas LLC and KCG IP Holdings LLC for the two parties to bring this Complaint together.
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.”
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 thus it treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant uses its mark CITADEL in connection with financial services. Complainant has rights in the CITADEL mark based on its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., CITDAEL - Reg. No. 2,812,459, registered Feb. 10, 2004) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 6,906,676, registered May 21, 2010). The disputed domain name is confusingly similar to Complainant’s CITADEL mark, as it fully incorporates the mark, adding only the generic term “crypto” and generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <crypto-citadel.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CITADEL mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert internet users away from Complainant’s website to a pay-to-enter private chat room that offers competing services to that of the Complainant.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s website where Respondent offers competing crypto-currency services in a private chat room. Further, Respondent attempts to obtain users’ personal information through a phishing scheme.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on October 1, 2018.
2. Complainant has established rights in the CITADEL mark based upon its trademark registrations with the USPTO (e.g., CITDAEL - Reg. No. 2,812,459, registered Feb. 10, 2004) and the SAIC (e.g., Reg. No. 6,906,676, registered May 21, 2010).
3. The disputed domain name resolves to a website that purports to offer crypto-currency services and products through a private chat.
4. The web page associated with the disputed domain name asks user to enter payment information to enter a private chat room.
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 claims rights in the CITADEL mark based upon its trademark registrations around the world, including with the USPTO (e.g., CITDAEL - Reg. No. 2,812,459, registered Feb. 10, 2004) and the SAIC (e.g., Reg. No. 6,906,676, registered May 21, 2010). See Compl. Annexes 3 and 4. Registration of a mark with several government authorities throughout the world is sufficient to establish rights in that mark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). The Panel therefore holds that Complainant’s registration of the CITADEL mark with numerous government authorities is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues disputed domain name is confusingly similar to Complainant’s CITADEL mark, as it fully incorporates the mark, adding only the generic term “crypto” and generic top-level domain (“gTLD”) “.com.” Addition of generic terms and/or a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Respondent added the generic term “crypto” and the gTLD “.com” to Complainant’s mark when registering the disputed domain name. The Panel agrees that the disputed domain name is confusingly similar to Complainant’s CITADEL mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <crypto-citadel.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CITADEL mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the 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). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “Vyacheslav Goshmanov” and no information on record indicated Respondent was authorized to register a domain name with Complainant’s mark. Complainant also contends that Respondent identifies himself as “Dan Goshan” on the web page associated with the disputed domain name, further evidence that Respondent is not commonly known by the CITADEL mark. See Compl. Annex 9. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights and legitimate interests in the disputed domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name resolves to a website which is being used to divert Internet users away from Complainant’s website to a pay-to-enter private chat room that offers competing services to that of the Complainant. Use of a domain name to divert Internet users from a complainant’s website to a site that offers competing services for financial gain is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Complainant provides screenshots of the web page associated with the disputed domain name to support this contention. See Compl. Annex 7.
The Panel therefore finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent’s bad faith is indicated by its use of the disputed domain name to disrupt Complainant’s business. Use of a confusingly similar domain name to disrupt a complainant’s business by offering competing services may demonstrate bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 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)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides screenshots of the web page associated with the disputed domain name to support this contention. See Compl. Annex 7. The Panel notes the disputed domain name resolves to a website that purports to offer crypto-currency services and products through a private chat. Id. As the Panel agrees with Complainant’s contention, it finds that Respondent is using the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant further contends Respondent’s bad faith is indicated by its use of the disputed domain name to divert Internet users away from Complainant’s website in order to further a phishing scheme. Use of a disputed domain name to divert users from a complainant’s website to further a phishing scheme may indicate bad faith per Policy ¶ 4(a)(iii). See Citigroup Inc. v. Domain MANAGER / Domain Brokers, FA1505001621817 (Forum July 13, 2015) (finding that the respondent’s use of a survey, in which Internet users were encouraged to enter personal information to complete, indicated bad faith registration and use pursuant to Policy ¶ 4(a)(iii)). Complainant provides screenshots of the web page associated with the disputed domain name, which asks user to enter payment information to enter a private chat room and an affidavit regarding engagement with the disputed domain name. See Compl. Annex. 7 and 8.
The Panel notes that the decision regarding this disputed domain name in the first proceeding recognized Respondent’s response via email to the Forum stating: “I didn’t have a bad intention when registering a domain, and this site is intended for my YouTube channel and repeats the name of my channel.” See Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v. Vyacheslav Goshmanov, FA1812001821438 (Forum Jan. 20, 2019). Complainant has provided a screenshot of the YouTube search results which appears to discredit this assertion. See Compl. Annex 10.
The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith under 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 <crypto-citadel.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 27, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page