Citigroup Inc. v. Alanadi idarecisi
Claim Number: FA0607000765735
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 Alanadi idarecisi (“Respondent”), istiklal cad. no 37 kat 2, beyoglu, Istanbul 31250, TR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myciticard.com>, registered with Enom, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2006.
On July 31, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <myciticard.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 28, 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@myciticard.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 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <myciticard.com> domain name is confusingly similar to Complainant’s CITI and CITICARD marks.
2. Respondent does not have any rights or legitimate interests in the <myciticard.com> domain name.
3. Respondent registered and used the <myciticard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., is a world-renowned financial services company. Complainant holds numerous registrations of its marks with the United States Patent and Trademark Office (“USPTO”), including registrations of the CITI (Reg. No. 1,181,467 issued December 8, 1981) and CITICARD (Reg. No. 1,423,239 issued December 30, 1986) marks. Complainant utilizes these marks in connection with providing a wide range of financial services to businesses and individuals.
Respondent registered the <myciticard.com> domain
name on November 7, 2003. Respondent is
using the disputed domain name to operate a website composed of links to
third-party websites, many of which are commercial websites promoting financial
services in direct competition with Complainant. Respondent’s website also generates numerous pop-up
advertisements.
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 established rights in the CITI and CITICARD
marks well before Respondent registered the disputed domain name through
registration of the marks with the USPTO.
Thus, the Panel finds that Complainant has rights in the CITI and
CITICARD marks as contemplated by Policy ¶ 4(a)(i). See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive."); see also 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.”).
Respondent’s <myciticard.com>
is confusingly similar to Complainant’s CITI and CITICARD marks. Respondent’s domain name contains
Complainant’s marks in their entirety, adding only the term “my.” The addition of the term “my” to
Complainant’s marks does not create a distinct domain name. The panel in NIIT Ltd. v.
Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000), found that the
“domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part
thereof, is confusingly similar to the Complainant’s trade name and trademark
NIIT.” In a case with similar
circumstances, ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb.
Forum Sept. 5, 2000), the panel decided that the “domain name
MYSPORTSCENTER.COM registered by Respondent is confusingly similar to
Complainant’s SportsCenter mark.” Thus,
the Panel finds that Respondent’s addition of the term “my” to Complainant’s
marks does not overcome the confusing similarity between the disputed domain
name and Complainant’s marks pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or
legitimate interests in the disputed domain name. Complainant’s assertion constitutes a prima facie case for
purposes of the Policy and shifts the burden to Respondent to demonstrate that
it does have rights o legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(a)(ii). The panel in Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), stated that
where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent.” In cases such as the one
at hand where the Respondent does not avail itself of the opportunity to submit
a Response, the Panel does not have the opportunity to examine evidence or
arguments from Respondent suggesting that it does have rights or legitimate
interests in the disputed domain name.
In such situations, the Panel may presume that Respondent’s lack of a
Response is evidence that Respondent lacks rights or legitimate interests. As the panel in Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002), explained, “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.” Thus, the Panel will
review the available evidence to determine whether Respondent has rights or
legitimate interests as contemplated by Policy ¶ 4(c).
Respondent is using the <myciticard.com>
domain name to redirect Internet users to Respondent’s website. Respondent’s website features links to
third-party websites, some of which compete with Complainant, and generates
numerous pop-up advertisements.
Presumably, Respondent is receiving revenue generated by the pop-up
advertisements and third-party links.
In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003), the panel found that such use implied that the
respondent lacked rights or legitimate interests, saying that, “Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).” Similarly, in TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel found that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services. Finally, in Wells
Fargo & Co. v. Lin Shun Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003), the panel decided that using a domain
name to direct Internet traffic to a website featuring pop-up advertisements
and links to various third-party websites was neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably received compensation for each misdirected Internet user. Thus, the Panel finds that Respondent lacks
rights and legitimate interests in the <myciticard.com> domain
name because the disputed domain name is not being used in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Additionally, there is no
available evidence that Respondent is commonly known by the <myciticard.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “Alanadi idarecisi,” which appears to be
unrelated to the disputed domain name.
Furthermore, Complainant asserts without contradiction that Respondent
is not affiliated with Complainant and lacks permission to use Complainant’s
mark in a domain name. Thus, the Panel
finds that Respondent is not commonly known by the disputed domain name and
lacks rights And legitimate interests as contemplated by Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <myciticard.com> domain name is confusingly similar to Complainant’s CITI and CITICARD marks. Internet users seeking Complainant’s financial goods and services may enter one of Complainant’s marks into an Internet search engine or web browser, and may find themselves redirected to Respondent’s website. Once at Respondent’s website, Internet users may be confused as to the source or affiliation of Respondent’s website, perhaps mistakenly believing that Complainant in someway sponsors Respondent’s website. Respondent is capitalizing on this confusion by posting links to third-party websites on its website and by hosting pop-up advertisements, all of which presumably generate funds for Respondent. In TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), the panel found that, “although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.” Similarly, the panel in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes. Thus, the Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Respondent’s website for Respondent’s financial benefit is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Respondent not only benefits by redirecting Internet users
to its website located at the disputed domain name, Respondent also harms
Complainant’s business in the process.
Internet users seeking Complainant’s genuine websites in order to
utilize Complainant’s financial services may find themselves instead redirected
to Respondent’s website. Once at
Respondent’s website, Internet users may follow the links to competing
third-party websites and use their financial services instead of Complainants,
thus taking their business away from Complainant. The Panel finds that such use disrupts Complainant’s business and
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
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 <myciticard.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 14, 2006
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