Citizens Financial Group, Inc. and Charter One Financial, Inc. v. DomainPark Limited a/k/a Domain Park Limited a/k/a hostmaster
Claim Number: FA0802001142126
Complainant is Citizens Financial Group, Inc. and Charter One
Financial, Inc. (“Complainant”),
represented by James A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The <citizensbanktx.org>, <ccitizensbank.com>, <charteronebankhome.com>, <charteronemortgagee.com>, <citizenabankonline.com>, <citizenbank24.com>, <citizenbankofboston.com>, <citizenbanktricities.com>, <citizensbankada.com>, <citizensbankandtrustinc.com>, <citizensbankauto.com>, <citizensbankcorp.com>, <citizensbanki.com>, <citizensbankjobs.com>, <citizensbanklonline.com>, <citizensbankofashville.com>, <citizensbankofcochran.com>, <citizensbankofjackson.com>, <citizensbankofnevadacounty.com>, <citizensbankonine.com>, <citizensbankus.com>, <citizensmerchantbank.com>, <citizensnationalbanking.com>, <citizenwsbank.com>, <citizenzbankonline.com>, <citozensbank.com>, <ciyizensbank.com>, <comcitizensbank.com>, <farmerscitizenbank.com>, <firscitizensbank.com>, <firstcitizensbank-2.com>, <jjcharterone.com>, <thecitizenbank.net>, <thecitizensbankofphiladelphia.com>, <wwwcharteronebankgiftcard.com>, <wwwcitizensbankgiftcard.com>, <wwwcitizensbanking.com>, <wwwfarmerscitizensbank.com>, <wwwthecitizensbank.com> and <charteronenbank.com> domain names at issue are registered with Moniker Online Services, Inc., and the <citizenbankri.com>, <citizensbankcredit.com>, <citizensbankingcompany.com>, <citizensnbank.com>, <fristcitizensbank.com> and <firstcitizenbanking.com> domain names at issue are registered with Rebel.com.
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
On February 1, 2008 Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <citizensbanktx.org>, <ccitizensbank.com>, <charteronebankhome.com>, <charteronemortgagee.com>, <citizenabankonline.com>, <citizenbank24.com>, <citizenbankofboston.com>, <citizenbanktricities.com>, <citizensbankada.com>, <citizensbankandtrustinc.com>, <citizensbankauto.com>, <citizensbankcorp.com>, <citizensbanki.com>, <citizensbankjobs.com>, <citizensbanklonline.com>, <citizensbankofashville.com>, <citizensbankofcochran.com>, <citizensbankofjackson.com>, <citizensbankofnevadacounty.com>, <citizensbankonine.com>, <citizensbankus.com>, <citizensmerchantbank.com>, <citizensnationalbanking.com>, <citizenwsbank.com>, <citizenzbankonline.com>, <citozensbank.com>, <ciyizensbank.com>, <comcitizensbank.com>, <farmerscitizenbank.com>, <firscitizensbank.com>, <firstcitizensbank-2.com>, <jjcharterone.com>, <thecitizenbank.net>, <thecitizensbankofphiladelphia.com>, <wwwcharteronebankgiftcard.com>, <wwwcitizensbankgiftcard.com>, <wwwcitizensbanking.com>, <wwwfarmerscitizensbank.com>, <wwwthecitizensbank.com> and <charteronenbank.com> domain names are registered with Moniker Online Services, Inc., and that Respondent is the current registrant of the names. 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
On February 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 2008 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@ccitizensbank.com, postmaster@charteronebankhome.com, postmaster@charteronemortgagee.com, postmaster@citizenabankonline.com, postmaster@citizenbank24.com, postmaster@citizenbankofboston.com, postmaster@citizenbankri.com, postmaster@citizenbanktricities.com, postmaster@citizensbankada.com, postmaster@citizensbankandtrustinc.com, postmaster@citizensbankauto.com, postmaster@citizensbankcorp.com, postmaster@citizensbankcredit.com, postmaster@citizensbanki.com, postmaster@citizensbankingcompany.com, postmaster@citizensbankjobs.com, postmaster@citizensbanklonline.com, postmaster@citizensbankofashville.com, postmaster@citizensbankofcochran.com, postmaster@citizensbankofjackson.com, postmaster@citizensbankofnevadacounty.com, posmaster@citizensbankonine.com, postmaster@citizensbankus.com, postmaster@citizensmerchantbank.com, postmaster@citizensnationalbanking.com, postmaster@citizensnbank.com, postmaster@citizenwsbank.com, postmaster@citizenzbankonline.com, postmaster@citozensbank.com, postmaster@ciyizensbank.com, postmaster@comcitizensbank.com, postmaster@farmerscitizenbank.com, postmaster@firscitizensbank.com, postmaster@firstcitizensbank-2.com, postmaster@fristcitizensbank.com, postmaster@jjcharterone.com, postmaster@thecitizenbank.net, postmaster@thecitizensbankofphiladelphia.com, postmaster@wwwcharteronebankgiftcard.com, postmaster@wwwcitizensbankgiftcard.com, postmaster@wwwcitizensbanking.com, postmaster@wwwfarmerscitizensbank.com, postmaster@wwwthecitizensbank.com, postmaster@charteronenbank.com, postmaster@firstcitizenbanking.com and postmaster@citizensbanktx.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 disputed domain names are confusingly similar to Complainant’s CITIZENS BANK and CHARTER ONE marks.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, is collectively comprised of Citizens Financial
Group, Inc., and Charter One Financial, Inc.
Citizens Financial Group, Inc., owns Charter One Financial, Inc. Complainant provides a variety of financial goods and
services under its CITIZENS BANK and CHARTER ONE marks, including retail and
commercial banking services. Complainant
first filed a registration application for its CITIZENS BANK mark with the
United States Patent and Trademark Office (“USPTO”) on
Respondent registered its disputed domain names
incorporating Complainant’s CITIZENS BANK mark between
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 produced evidence of the registrations for
its CITIZENS BANK and CHARTER ONE marks with the USPTO. The Panel finds these registrations are
sufficient to establish Complainant’s rights in its CITIZENS BANK and CHARTER
ONE marks pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum
Respondent’s <charteronebankhome.com>, <charteronemortgagee.com>,
<jjcharterone.com>, <wwwcharteronebankgiftcard.com>
and <charteronenbank.com> domain names each incorporate
Complainant’s CHARTER ONE mark with the addition of generic or descriptive
terms, the addition of letter(s) and the addition of common typographical
errors. None of these alterations
distract from the prominence of Complainant’s mark in the disputed domain
names. Also, the addition of the generic
top-level domain (“gTLD”) “.com” is not relevant in evaluating whether a
disputed domain name is confusingly similar to a mark. Therefore, the Panel finds these disputed
domain names are confusingly similar to Complainant’s CHARTER ONE mark pursuant
to Policy ¶ 4(a)(i). See Arthur Guinness Son &
Co. (
Respondent’s remaining disputed domain names each
incorporate Complainant’s CITIZENS BANK mark with alterations such as the
addition of generic, descriptive or geographical terms, the addition of
prepositions or articles, and common typographical errors. None of these alterations sufficiently
distinguish Respondent’s disputed domain names from Complainant’s CITIZENS BANK
mark. As noted above, the addition of
gTLDs such as “.com,” and “.org,” are irrelevant in evaluating whether a
disputed domain name is similar to a mark.
Therefore, the Panel finds Respondent’s remaining disputed domain names
are all confusingly similar to Complainant’s CITIZENS BANK mark pursuant to
Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted Respondent does not have rights or
legitimate interests in the disputed domain names. Once Complainant presents a prima facie case supporting these
assertions, the burden shifts to Respondent to establish it does have rights or
legitimate interests in the disputed domain names pursuant to Policy ¶
4(a)(ii). The Panel finds Complainant has
presented a sufficient prima facie
case to support its assertions.
Respondent failed to submit a response to these proceedings. Therefore, the Panel assumes Respondent does
not have rights or legitimate interests in the disputed domain names pursuant to
Policy ¶ 4(a)(ii). The Panel will nevertheless
inspect the record and determine whether Respondent has rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c). See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO
Respondent’s disputed domain names resolve to websites which
display links to Complainant’s competitors who also provide financial goods and
services. The Panel finds Respondent’s
uses of the disputed domain names are not uses in connection with bona fide offerings of goods or services
pursuant to Policy ¶ 4(c)(i), or legitimate noncommercial or fair uses pursuant
to Policy ¶ 4(c)(iii). See 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); see also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the
respondent was not using the domain names for a bona fide offering of
goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
Respondent does not appear to be commonly known by the disputed domain names. The WHOIS information states Respondent is known as “Domain Park Limited a/k/a domain park limited a/k/a hostmaster.” Additionally, the record indicates Complainant has never authorized Respondent to use its CITIZENS FIRST or CHARTER ONE marks. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names and thus has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
In addition, some of Respondent’s disputed domain names are being used to typosquat. The Panel finds typosquatting does not confer legitimate rights or interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered forty-six domain names which infringe
on Complainant’s CITIZENS FIRST or CHARTER ONE marks. The Panel finds Respondent’s registration of
multiple infringing domain names constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(ii). See Harcourt,
Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one
instance of registration of several infringing domain names satisfies the
burden imposed by the Policy ¶ 4(b)(ii)); see
also EPA European Pressphoto Agency B.V. v.
Respondent’s disputed domain names resolve to websites which
display links to the third-party websites of Complainant’s competitors. The Panel finds Respondent’s use of the
disputed domain names constitutes disruption and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See
H-D
Michigan Inc. v. Buell, FA 1106640
(Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites
that list links to competitors of Complainant, evidence that Respondent intends
to disrupt Complainant’s business, a further indication of bad faith pursuant
to Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Also, Respondent presumably receives click-through fees for
displaying links to Complainant’s competitors on the website resolving from the
confusingly similar disputed domain names. Thus, the Panel finds Respondent is attempting
to profit from the goodwill associated with Complainant’s marks, which is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if the respondent profits from its diversionary use of the complainant's mark
when the domain name resolves to commercial websites and the respondent fails
to contest the complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); 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.’”).
Finally, Respondent is
using common typographical errors in order to typosquat with some of the disputed
domain names. The Panel finds
typosquatting is evidence of bad faith registration and use pursuant to Policy
¶ 4(a)(iii). See Sports
The Panel finds 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 <ccitizensbank.com>, <charteronebankhome.com>, <charteronemortgagee.com>, <citizenabankonline.com>, <citizenbank24.com>, <citizenbankofboston.com>, <citizenbankri.com>, <citizenbanktricities.com>, <citizensbankada.com>, <citizensbankandtrustinc.com>, <citizensbankauto.com>, <citizensbankcorp.com>, <citizensbankcredit.com>, <citizensbanki.com>, <citizensbankingcompany.com>, <citizensbankjobs.com>, <citizensbanklonline.com>, <citizensbankofashville.com>, <citizensbankofcochran.com>, <citizensbankofjackson.com>, <citizensbankofnevadacounty.com>, <citizensbankonine.com>, <citizensbankus.com>, <citizensmerchantbank.com>, <citizensnationalbanking.com>, <citizensnbank.com>, <citizenwsbank.com>, <citizenzbankonline.com>, <citozensbank.com>, <ciyizensbank.com>, <comcitizensbank.com>, <farmerscitizenbank.com>, <firscitizensbank.com>, <firstcitizensbank-2.com>, <fristcitizensbank.com>, <jjcharterone.com>, <thecitizenbank.net>, <thecitizensbankofphiladelphia.com>, <wwwcharteronebankgiftcard.com>, <wwwcitizensbankgiftcard.com>, <wwwcitizensbanking.com>, <wwwfarmerscitizensbank.com>, <wwwthecitizensbank.com>, <charteronenbank.com>, <firstcitizenbanking.com> and <citizensbanktx.org> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 8, 2008
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