Citigroup Inc. v. domains Ventures
Claim Number: FA0607000758967
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady, Jr., of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is domains Ventures (“Respondent”), 136 Xiaxue Road, Xiamen, Fujian, II 361001 CN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwcitimortgage.com>, registered with Moniker Online Services, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2006.
On August 4, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwcitimortgage.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 August 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 30, 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@wwwcitimortgage.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <wwwcitimortgage.com> domain name is confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <wwwcitimortgage.com> domain name.
3. Respondent registered and used the <wwwcitimortgage.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup, Inc. is engaged in the business of providing financial services, namely, banking, credit cards, investment consultation, analysis and planning, securities and insurance brokerage, underwriting annuities and mortgage services. Complainant has provided this broad range of financial services to consumers and corporate customers worldwide under the since as early as 1959. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”), including the CITI mark (Reg. No. 681,815, issued January 19, 1960).
Respondent registered the <wwwcitimortgage.com> domain name on May 17, 2003. The disputed domain name resolves to a website that features various advertisements for websites not sponsored by or affiliated with Complainant, including websites with adult-oriented 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 to the CITI mark through registration 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 Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant asserts that the <wwwcitimortgage.com> domain name is confusingly similar to its CITI mark. The disputed domain name adds the common Internet prefix “www” and the term “mortgage” to the Complainant’s CITI mark. The Panel finds that neither the addition of the prefix “www” nor the addition of a term that describes the business of Complainant successfully distinguish the disputed domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests the disputed domain name. Pursuant to Policy ¶ 4(a)(ii), Complainant holds the initial burden of proof to establish that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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”); see also 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). The Panel finds that Complainant has established a prima facie case in support of its uncontested assertions in its Complaint.
Respondent’s failure to submit a Response in this proceeding
raises a presumption that Respondent lacks rights and legitimate interests in
the disputed domain name. See Am. Express Co. v. Fang Suhendro,
FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent originally registered the <wwwcitimortgage.com> domain name with a privacy shield. Upon commencement of this proceeding, it was revealed that the registrant of the disputed domain name was “domains Ventures.” Because there is no other evidence in the record to suggest otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).
Complainant further asserts that Respondent is not using the
disputed domain name in connection with a bona fide offering of goods or
services or for a legitimate noncommercial use. The disputed domain name resolves to a website that features
various advertisements for websites not sponsored by or affiliated with
Complainant, including websites with adult-oriented content, from which
Respondent presumably receives commercial benefit. The Panel finds that such a use of a confusingly similar domain
name does not qualify as a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial use pursuant to
Policy ¶ 4(c)(iii). See Sony
Kabushiki Kaisha v. Domain
rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002)
(finding that the respondent’s use of its domain name in order to divert
Internet users to a website that offers search engine services and links to
adult orientated websites was not considered to be in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)); see also Compaq Info.
Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that
the respondent had no rights or legitimate interests in a domain name that it
used to redirect Internet users to a commercial website as part of that
website’s affiliate program, where the resultant website contained banner ads
as well as various links to offers for free merchandise, including merchandise
from the complainant's competitor).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has registered and used the disputed domain name in bad faith. Due to the fact that the disputed domain name resolves to a website that features various advertisements for other websites, the Panel may reasonably infer that Respondent is receiving commercial gain from its activities. Additionally, due to the confusingly similar nature of the disputed domain name to Complainant’s mark, Internet users are likely to become confused as to Complainant’s affiliation with or sponsorship of the resulting website. Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Additionally, Complainant has submitted extrinsic evidence that Respondent has been the target of at least 16 prior proceedings conducted under the Policy in which Respondent was found to have registered and used the subject domain names in bad faith. See AARP v. domains Ventures, FA 514786 (Nat. Arb. Forum Aug. 25, 2004); see also Target Brands, Inc. v. Domains Ventures, FA 671035 (Nat. Arb. Forum May 15, 2006); see also Allegiant Air v. Domains Ventures, FA 712049 (Nat. Arb. Forum June 29, 2006). The Panel finds that Respondent has prevented Complainant from reflecting its mark in the disputed domain name and that Respondent has engaged in a pattern of registering and using domain names in such a manner which constitutes bad faith under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
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 <wwwcitimortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 20, 2006
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