Citigroup Inc. v. Digi Real Estate Foundation a/k/a NA NA
Claim Number: FA0601000635605
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Digi Real Estate Foundation a/k/a NA NA (“Respondent”), P.O. Box 7-5324, Panama City, PA N7 8DJ, PA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <citibankdirect.com>, registered
with Solid Hub, Inc., <citicaard.com>, registered
with Itpan.com Inc., <citimotrgage.com>, registered
with Dagnabit, Inc., <citimortgag.com>, registered
with Bizcn.com, Inc., <citicads.com>,
<citicsrds.com>, <citifiancial.com> and <citifinancail.com>,
registered with Enom, Inc., <citibankemployment.com>,
registered with Total Calories, Inc., <nationalciti.com>,
registered with Dnsvillage.com, <citiards.com>, registered with Namesecure.com,
<citifinacialmortgage.com>, registered with Stargate
Holdings Corp., <citicardss.com>, registered with Walela
Brook, Inc., <ctitcards.com>, registered with 000Dom,
and <primmerica.com>, registered with Name Intelligence, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 26, 2006.
On January 25, 2006, 000Dom
confirmed by e-mail to the National Arbitration Forum that the <ctitcards.com>
domain name is registered with 000Dom and that Respondent is the current registrant
of the name. 000Dom has verified that
Respondent is bound by the 000Dom registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Dispute Resolution Policy (the “Policy”).
On January 25, 2006, Stargate
Holdings Corp. confirmed by e-mail to the National Arbitration Forum that the <citifinacialmortgage.com>
domain name is registered with Stargate Holdings Corp. and that Respondent is
the current registrant of the name.
Stargate Holdings Corp. has verified that Respondent is bound by the
Stargate Holdings Corp. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with the
Policy.
On January 26, 2006, Dagnabit,
Inc. confirmed by e-mail to the National Arbitration Forum that the <citimotrgage.com>
domain name is registered with Dagnabit, Inc. and that Respondent is the
current registrant of the name.
Dagnabit, Inc. has verified that Respondent is bound by the Dagnabit,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the Policy.
On January 26, 2006, Solid
Hub, Inc. confirmed by e-mail to the National Arbitration Forum that the <citibankdirect.com>
domain name is registered with Solid Hub, Inc. and that Respondent is the
current registrant of the name. Solid
Hub, Inc. has verified that Respondent is bound by the Solid Hub, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the Policy.
On January 26, 2006, Enom,
Inc. confirmed by e-mail to the National Arbitration Forum that the <citicads.com>,
<citicsrds.com>, <citifiancial.com> and <citifinancail.com>
domain names are registered with Enom, Inc. and that Respondent is the
current registrant of the names. Enom,
Inc. has verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the Policy.
On January 26, 2006, Itpan.com
Inc. confirmed by e-mail to the National Arbitration Forum that the <citicaard.com>
domain name is registered with Itpan.com Inc. and that Respondent is the
current registrant of the name.
Itpan.com Inc. has verified that Respondent is bound by the Itpan.com
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the Policy.
On January 26, 2006, Dnsvillage.com
confirmed by e-mail to the National Arbitration Forum that the <nationalciti.com>
domain name is registered with Dnsvillage.com and that Respondent is the
current registrant of the name.
Dnsvillage.com has verified that Respondent is bound by the
Dnsvillage.com registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the Policy.
On January 27, 2006, Walela
Brook, Inc. confirmed by e-mail to the National Arbitration Forum that the <citicardss.com>
domain name is registered with Walela Brook, Inc. and that Respondent is the
current registrant of the name. Walela
Brook, Inc. has verified that Respondent is bound by the Walela Brook, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the Policy.
On January 27, 2006, Total
Calories, Inc. confirmed by e-mail to the National Arbitration Forum that the <citibankemployment.com>
domain name is registered with Total Calories, Inc. and that Respondent is the
current registrant of the name. Total
Calories, Inc. has verified that Respondent is bound by the Total Calories,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the Policy.
On January 27, 2006, Bizcn.com,
Inc. confirmed by e-mail to the National Arbitration Forum that the <citimortgag.com>
domain name is registered with Bizcn.com, Inc. and that Respondent is the
current registrant of the name.
Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the Policy.
On January 27, 2006, Namesecure.com
confirmed by e-mail to the National Arbitration Forum that the <citiards.com>
domain name is registered with Namesecure.com and that Respondent is the
current registrant of the name.
Namesecure.com has verified that Respondent is bound by the Namesecure.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the Policy.
On January 30, 2006, Name
Intelligence, Inc. confirmed by e-mail to the National Arbitration Forum that
the <primmerica.com> domain name is registered with Name
Intelligence, Inc. and that Respondent is the current registrant of the
name. Name Intelligence, Inc. has
verified that Respondent is bound by the Name Intelligence, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the Policy.
On February 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 27, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@citibankdirect.com, postmaster@citicaard.com, postmaster@citimotrgage.com, postmaster@citicads.com, postmaster@citimortgag.com, postmaster@citicsrds.com, postmaster@citifiancial.com, postmaster@citifinancail.com, postmaster@citibankemployment.com, postmaster@nationalciti.com, postmaster@citiards.com, postmaster@citifinacialmortgage.com, postmaster@citicardss.com, postmaster@ctitcards.com and postmaster@primmerica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <citibankdirect.com>, <citicaard.com>, <citimotrgage.com>, <citicads.com>, <citimortgag.com>, <citicsrds.com>, <citifiancial.com>, <citifinancail.com>, <citibankemployment.com>, <nationalciti.com>, <citiards.com>, <citifinacialmortgage.com>, <citicardss.com>, <ctitcards.com> and <primmerica.com> domain names are confusingly similar to Complainant’s CITI and PRIMERICA marks.
2. Respondent does not have any rights or legitimate interests in the <citibankdirect.com>, <citicaard.com>, <citimotrgage.com>, <citicads.com>, <citimortgag.com>, <citicsrds.com>, <citifiancial.com>, <citifinancail.com>, <citibankemployment.com>, <nationalciti.com>, <citiards.com>, <citifinacialmortgage.com>, <citicardss.com>, <ctitcards.com> and <primmerica.com> domain names.
3. Respondent registered and used the <citibankdirect.com>, <citicaard.com>, <citimotrgage.com>, <citicads.com>, <citimortgag.com>, <citicsrds.com>, <citifiancial.com>, <citifinancail.com>, <citibankemployment.com>, <nationalciti.com>, <citiards.com>, <citifinacialmortgage.com>, <citicardss.com>, <ctitcards.com> and <primmerica.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup, is an international financial services company. Since 1976, Complainant has been offering its individual and corporate customers a wide variety of services, including banking, credit cards, insurance, mortgages, and investment advice. Complainant operates more than 1,700 branches and 5,100 ATMs in over 100 countries around the world. Primerica is a subsidiary of Complainant that offers, among other things, affordable life insurance, first mortgages, annuities, and retirement savings vehicles.
Complainant owns more than 100 trademark registrations with the United States Patent and Trademark Office (“USPTO”). These marks include CITI (Reg. No. 1,181,467 issued December 8, 1981), CITIMORTGAGE (Reg. No. 2,897,519 issued October 26, 2004), CITICARD (Reg. No. 1,423,239 issued December 30, 1986), CITIFINANCIAL (Reg. No. 2,951,903 issued May 17, 2005), CITIBANK (Reg. No. 691,815 issued January 19, 1960), and PRIMERICA (Reg. No. 1,498,362 issued August 2, 1988; Reg. No. 1,497,031 issued July 19, 1988; Reg. No. 1,492,554 issued June 14, 1988; Reg. No. 1,501,588 issued August 23, 1988).
Respondent registered the disputed domain names on the
following dates: <citifiancial.com> on May 11, 2004, <citifinancail.com>
on June 16, 2004,
<citimortgag.com> on August 7, 2004, <citicads.com>,
<citiards.com>, and <citicsrds.com> on January 25,
2005, <citicardss.com> on July 3, 2005, <citimotrgage.com> on August 6, 2005, <nationalciti.com>
on August 25, 2005,
<citicaard.com> on October 1, 2005, <primmerica.com> on October 11, 2005
<citibankemployment.com> on November 24, 2005, <citibankdirect.com> and <citifinacialmortgage.com> on November 26, 2005, and <ctitcards.com> on November 29, 2005. Most of Respondent’s domain names resolve to web directories displaying links to Complainant’s competitors in the banking, insurance, credit card, and mortgage service industries. Some of the domain names resolve to websites featuring content unrelated to Complainant’s services, including pornography and pop-up advertisements. The <citibankemployment.com> and <citicardss.com> domain names do not resolve to any content.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant has established rights in the CITI and PRIMERICA
marks by registering the marks with the USPTO.
See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <citibankdirect.com>, <citicaard.com>, <citimotrgage.com>, <citicads.com>, <citimortgag.com>, <citicsrds.com>, <citifiancial.com>, <citifinancail.com>, <citibankemployment.com>, <nationalciti.com>, <citiards.com>, <citifinacialmortgage.com>, <citicardss.com> and <ctitcards.com> domain names are confusingly similar to Complainant’s CITI mark pursuant to Policy ¶ 4(a)(i), because each fully incorporates the mark and merely adds a generic word to the beginning or end of Complainant’s mark. In Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000), the respondent registered domain names incorporating the SONY mark and adding generic words to the end of the mark. The Panel stated that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied.” Therefore, Respondent’s addition of generic words does not distinguish its domain names from Complainant’s CITI mark. Id; see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
Furthermore, Respondent’s <primmerica.com>
domain name is confusingly similar to Complainant’s PRIMERICA mark pursuant to
Policy ¶ 4(a)(i) because it simply adds an extra letter, “m,” to the mark. Panels have held that the mere misspelling
of a complainant’s mark does not make a domain name distinctive. See Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Am.Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd.,
FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that the respondent’s domain
name, <americanonline.com>, is confusingly similar to the complainant’s
famous AMERICA ONLINE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed domain names. Complainant has the initial burden of proof in establishing that
Respondent lacks rights or legitimate interests in the domain names. Once Complainant makes a prima facie
case in support of its allegations, the burden then shifts to Respondent to
show it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide “concrete evidence that it has
rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the domain names under the name “Digi Real Estate Foundation a/k/a/ NA NA,” and there is no other evidence in the record suggesting that Respondent is commonly known by any of the disputed domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Moreover, Respondent’s disputed domain names, which
are confusingly similar to Complainant’s CITI and PRIMERICA marks, resolve to
websites containing links to Complainant’s direct competitors, unrelated
content, pornography, and pop-up advertisements. None of these uses of the disputed domain names constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use of the domain names pursuant to Policy ¶
4(c)(iii), because Respondent likely receives click-through fees for diverting
Internet users to these websites and therefore is using the Complainant’s marks
for commercial gain. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that
the respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use); see
also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17,
2003) (finding that the respondent did not use a domain name in connection with
a bona fide offering of goods or services nor a legitimate noncommercial
or fair use because the respondent used the domain name to divert Internet
users seeking the complainant's goods or services to pornographic material and
links, while presumably earning a commission or referral fees from
advertisers).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the disputed domain
names in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain
names resolve to websites displaying links to Complainant’s direct competitors,
unrelated content, pornography, and pop-up advertisements. Respondent likely receives click-through
fees for each consumer it redirects to other websites. Therefore, Respondent is taking advantage of
the likelihood of confusion between Respondent’s domain name, the website
content, and Complainant’s CITI and PRIMERICA marks, and capitalizing on the
goodwill associated with the marks. See
Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
respondent engaged in bad faith use and registration by using domain names that
were identical or confusingly similar to the complainant’s mark to redirect
users to a website that offered services similar to those offered by the
complainant); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022
(WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion
of the domain name to a pornographic site is itself certainly consistent with
the finding that the Domain Name was registered and is being used in bad
faith.”); see also Bama Rags, Inc.
v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith
where the respondent used a misspelling of the complainant’s famous mark to
attract Internet users to a series of advertisements).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <citibankdirect.com>, <citicaard.com>, <citimotrgage.com>, <citicads.com>, <citimortgag.com>, <citicsrds.com>, <citifiancial.com>, <citifinancail.com>, <citibankemployment.com>, <nationalciti.com>, <citiards.com>, <citifinacialmortgage.com>, <citicardss.com>, <ctitcards.com> and <primmerica.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 21, 2006
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