Citizens Financial Group, Inc. v. Albert Kao
Claim Number: FA0707001030868
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <citizenbankonline.org>, registered with Melbourne IT, Ltd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 11, 2007.
On July 12, 2007, Melbourne IT, Ltd. confirmed by e-mail to the National Arbitration Forum that the <citizenbankonline.org> domain name is registered with Melbourne IT, Ltd. and that Respondent is the current registrant of the name. Melbourne IT, Ltd. has verified that Respondent is bound by the Melbourne IT, Ltd. 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 ("Policy").
On July 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 1, 2007 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@citizenbankonline.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the eighth-largest commercial bank holding
company in the
Complainant provides a wide range of financial services
throughout the
A significant part of Complainant’s business is providing banking services via the Internet under its CITIZENS BANK ONLINE mark.
Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”); including several for variations of the CITIZENS BANK ONLINE mark (Reg. No. 2,407,272 issued November 21, 2000).
Additionally, Complainant operates a website at <citizensbankonline.com>.
Respondent is not authorized or licensed to make use of Complainant’s mark in any way.
Respondent registered the <citizenbankonline.org> domain name on May 16,
2007.
Respondent’s
disputed domain name resolves to a website purporting to provide banking and
financial services under the name “Citizen Finance and Security Bank.”
Additionally, Respondent is using the disputed domain name to “phish” for personal financial information by offering a dialogue box in which Respondent may communicate with Complainant’s customers.
Respondent’s <citizenbankonline.org> domain name is confusingly similar to Complainant’s CITIZENS BANK ONLINE mark.
Respondent does not have any rights to or legitimate interests in the domain name.
Respondent registered and uses the <citizenbankonline.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s trademark registration with the USPTO sufficiently establishes its rights in the CITIZENS BANK ONLINE mark. 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 <citizenbankonline.org> domain name is confusingly similar to Complainant’s CITIZENS BANK ONLINE mark under Policy ¶ 4(a)(i) inasmuch as it contains Complainant’s entire mark and merely removes the ‘s’ at the end of “CITIZENS” and eliminates the spaces between the terms in the mark. The addition of the generic top-level domain does nothing to alleviate the confusing similarity, as a top-level domain is a requirement for all domain names. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the mark is highly distinctive); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003):
Punctuation
and spaces between words are not significant in determining the similarity of a
domain name and a mark because punctuation and spaces are not reproducible in a
domain name.
See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.
Thus we find that Policy ¶ 4(a)(i) has been satisfied.
In order to shift the burden of proof to Respondent, Complainant must establish prima facie that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case, Respondent must prove that it has rights or legitimate interests in the disputed domain name. 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.
See also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002): “Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”
On the record before us, Complainant has made out a prima facie case. Respondent’s failure to respond to the allegations of the Complaint in the manner provided in the Policy means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
Complainant alleges, and Respondent does not deny, that Respondent is neither authorized nor licensed to make use of Complainant’s mark in any way. Also, Respondent’s WHOIS information does not indicate, and nothing in the record suggests, that Respondent is commonly known by the <citizenbankonline.org> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in a domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question). Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent’s <citizenbankonline.org> domain name is confusingly similar to Complainant’s mark, presumably in an effort to pass itself off as Complainant. Also, it is undisputed that Respondent’s website that resolves from the disputed domain name includes a dialogue box by which visitors may communicate with Respondent. We may presume that this is an attempt to acquire personal banking information from Complainant’s customers, as alleged in the Complaint. This use of the “phishing” technique is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
No evidence to the contrary appearing in the record, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
On the basis of the undisputed evidence presented by Complainant, we conclude that Respondent is attempting to deceive Complainant’s customers by providing a dialogue box in which customers may provide their personal banking information on the website that resolves from the <citizenbankonline.org> domain name in order to benefit commercially. Also, we conclude that the disputed domain name is likely to create confusion as to Complainant’s possible affiliation with the disputed domain name and related website. Thus to benefit fraudulently from the goodwill of Complainant constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because a respondent used a domain name to redirect Internet users to a website that imitated a complainant’s website fraudulently to acquire personal information from that complainant’s clients); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004): “The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”
In addition, that Respondent attempted to pass itself off as Complainant via the disputed domain name makes it clear that Respondent had actual knowledge of Complainant’s rights in the CITIZENS BANK ONLINE mark. This demonstrates to our satisfaction that Respondent registered and uses the <citizenbankonline.org> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a disputed domain name was registered and used in bad faith where a respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); to the same effect, see also Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <citizenbankonline.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 21, 2007
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