Citigroup Inc. v. SZK.com
Claim Number: FA0604000672087
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 SZK.com (“Respondent”), Via Trilussa 11, Pineto, TE 64025, IT.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <citifi.com>, registered with Dotster.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2006.
On April 12, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <citifi.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 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@citifi.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citifi.com> domain name is confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citifi.com> domain name.
3. Respondent registered and used the <citifi.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., is an international financial services company. Through its predecessors, Citicorp and Citibank, Complainant has been offering its individual and corporate customers a wide variety of services, including banking, credit cards, insurance, mortgages, and investment advice, since 1959. Complainant operates more than 1,700 branches and 5,100 ATMs in over 100 countries around the world.
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, filed January 15, 1999) and CITIBANK (Reg. No. 691,815 issued January 19, 1960). Complainant has applied for or registered variations of the CITI mark in over 200 countries throughout the world.
Respondent registered the disputed domain name on August 29, 2003. The <citifi.com> domain name resolves to a website providing links to Complainant’s competitors, including MBNA and Providian, and to unrelated content. Complainant provides evidence that Respondent is a “serial cybersquatter” and has been subject to at least twenty-four UDRP proceedings in the last five years. Complainant maintains that Respondent has registered over four thousand domain names, many of which incorporate the registered marks of third parties.
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 mark by
registering the mark with the USPTO.
Because Complainant filed for a trademark registration for the
CITIFINANCIAL mark in 1999, before Respondent registered the <citifi.com> domain name in 2003,
Complainant has also established rights to the CITIFINANCIAL mark pursuant to
Policy ¶ 4(a)(i). 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.”);
see also Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date).
Respondent’s <citifi.com> domain name is confusingly similar to Complainant’s CITI mark because it wholly incorporates the mark and simply adds the term “fi,” a common abbreviation in Complainant’s financial services business. The disputed domain name is also confusingly similar to Complainant’s CITIFINANCIAL mark because it merely abbreviates the second term of the mark. Panels have concluded that the mere addition of terms, to or abbreviations of terms, in a complainant’s mark renders the domain name confusingly similar to the mark under Policy ¶ 4(a)(i). See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark). Therefore, the <citifi.com> domain name is confusingly similar to Complainant’s CITI mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <citifi.com> domain name. 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See 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.”); see also 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). 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 name under the name “SZK.com,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <citifi.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name 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 name, which includes Complainant’s CITI mark, resolves to a website containing links to Complainant’s competitors and to unrelated content. Such use of the disputed domain name does not 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 thus 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iv), because the <citifi.com> domain name resolves to
a website displaying links to Complainant’s competitors and unrelated
content. Therefore, Respondent is
taking advantage of the confusing similarity between Respondent’s domain name,
the website content, and Complainant’s CITI mark, and profiting from the
goodwill associated with the mark. 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Furthermore, Respondent
has registered and used the disputed domain name for the purpose of disrupting the business of
Complainant, because Respondent is using the <citifi.com> domain name,
which includes Complainant’s CITI mark, to operate a website displaying links
to Complainant’s competitors.
Therefore, Respondent has registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent
registered the domain name in question to disrupt the business of the
complainant, a competitor of the respondent);
see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citifi.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 24, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum