Citigroup Inc. v. Eli Shoval a/k/a Shoval -ds
Claim Number: FA0811001232085
Complainant is Citigroup Inc. (“Complainant”), represented by Paul
D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Eli Shoval a/k/a Shoval
-ds (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wwwcitybank.com>, registered with Moniker Online Services, Inc.; <citibancreditcard.com>, <citibankcerditcard.com>, <citibankcrdeitcard.com>, and <citibankcreitcard.com>, registered with Dotregistrar; and <citibankstudentlons.com>, <citibanstudentloans.com>, and <wwwcitibankstudentloans.com>, registered with Namesdirect.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 31, 2008; the National Arbitration Forum received a hard copy of the Complaint November 3, 2008.
On November 3, 2008, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <citibancreditcard.com>, <citibankcerditcard.com>, <citibankcrdeitcard.com> and <citibankcreitcard.com> domain names are registered with Dotregistrar and that Respondent is the current registrant of the names. Dotregistrar verified that Respondent is bound by the Dotregistrar registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 3, 2008, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <citibankstudentlons.com>, <citibanstudentloans.com>, and <wwwcitibankstudentloans.com> domain names are registered with Namesdirect and that Respondent is the current registrant of the names. Namesdirect verified that Respondent is bound by the Namesdirect registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On November 4, 2008, Moniker Online Services, Inc., confirmed by e-mail to the National Arbitration Forum that the <wwwcitybank.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On November 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@wwwcitybank.com, postmaster@citibancreditcard.com, postmaster@citibankcerditcard.com, postmaster@citibankcrdeitcard.com, postmaster@citibankstudentlons.com, postmaster@citibankcreitcard.com, postmaster@citibanstudentloans.com, postmaster@wwwcitibankstudentloans.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Preliminary Issue: Possible Expiration of Domain Names
The Registrar of five of the domain names, <citibancreditcard.com>, <citibankcerditcard.com>,
<citibankcrdeitcard.com>, <citibankcreitcard.com>,
and <wwwcitibankstudentloans.com>, notified the National
Arbitration Forum that those five domain names expired after the commencement
of this case. The National Arbitration
Forum notified Complainant that these five domain names would need to be
redeemed before they could be included in this case. As of this date, Complainant has not
responded regarding this issue. The
National Arbitration Forum does not currently know the status of the domain names,
and does not know if that status is one that would allow the domain names to be
transferred to Complainant. The Panel
finds that insufficient evidence is before the Panel to show that the Panel has
jurisdiction at this time to resolve the case as to the following domain names:
<citibancreditcard.com>, <citibankcerditcard.com>, <citibankcrdeitcard.com>,
<citibankcreitcard.com>, and <wwwcitibankstudentloans.com>.
The Panel needs evidence to show that these domain names have been redeemed
before considering the merits as to Complainant’s claim as to those domain
names.
However, the Panel finds that the Complaint is dismissed without prejudice as to the following domain names and that Complainant is not estopped from filing a new action as to them after the correct information is obtained: <citibancreditcard.com>, <citibankcerditcard.com>, <citibankcrdeitcard.com>, <citibankcreitcard.com>, and <wwwcitibankstudentloans.com>. The Panel makes the appropriate analysis as to the remainder of the disputed domain names.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwcitybank.com>, <citibankstudentlons.com>, and <citibankstudentloans.com> domain names are confusingly similar to Complainant’s CITIBANK mark.
2. Respondent has no rights to or legitimate interests in the <wwwcitybank.com>, <citibankstudentlons.com>, and <citibanstudentloans.com> domain names.
3. Respondent registered and used the <wwwcitybank.com>, <citibanstudentlons.com>, and <citibankstudentloans.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a worldwide financial services company that
has offered since 1959 services under a set of trademarks and service marks comprised
of or featuring the CITI trademark (the “CITI Marks”), including the CITIBANK
mark. Complainant registered the CITIBANK
mark with the United States Patent and Trademark Office (“USPTO”) on January
19, 1960 (Reg. No. 691,815). Complainant
owns more than 100 registrations or applications for the CITI Marks in the
Respondent registered the <wwwcitybank.com> domain name on November 28, 2002. Respondent registered the <citibankstudentlons.com> and <citibanstudentloans.com> domain names November 15, 2007. The disputed domain names resolve to websites that features links to third-party websites promoting the competing financial services of other businesses.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant established rights in the
CITIBANK mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of
the mark with the USPTO. See 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 Diners Club Int’l Ltd.
v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring
rights in the DINERS mark to the complainant based upon its USPTO trademark
registration).
Complainant contends that Respondent’s <wwwcitybank.com> domain name is
confusingly similar to its CITIBANK mark. The <wwwcitybank.com> mark differs from Complainant’s mark in
three ways: (1) the letters “WWW” have been added to the beginning of the mark;
(2) the second letter “I” has been replaced with a “Y”; and (3) the generic
top-level domain (“gTLD”) “.com” has been added. None of these changes
eliminate or reduce the likelihood of confusion between the <wwwcitybank.com> domain name and
Complainant’s CITIBANK mark. Therefore,
the Panel finds that Respondent’s <wwwcitybank.com>
domain name is not sufficiently distinguished from Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See Neiman Marcus Group, Inc. v. S1A,
FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been
established because the prefix "www" does not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from the
complainant's NEIMAN-MARCUS mark); see
also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May
30, 2000) (finding the domain name <hewlitpackard.com> to be identical or
confusingly similar to the complainant’s HEWLETT-PACKARD mark); see also Isleworth Land Co. v. Lost
in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant contends that Respondent’s <citibankstudentlons.com>
domain name is confusingly similar to its CITIBANK mark. The <citibankstudentlons.com> mark
differs from Complainant’s mark in two ways: (1) a misspelled version of the
descriptive term “student loans” has been added to the end of the mark; and (2)
the gTLD “.com” has been added. As
stated above, adding a misspelled descriptive term does not distinguish a
domain name from a mark, nor does the addition of a gTLD. Therefore, the Panel finds that Respondent’s <citibankstudentlons.com> domain name
is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶
4(a)(i). See State Farm Mut. Auto. Ins.
Complainant contends that Respondent’s <citibanstudentloans.com> domain name
is confusingly similar to its CITIBANK mark. The <citibanstudentloans.com> mark differs from Complainant’s
mark in three ways: (1) the letters “K” has been removed from the mark; (2) the
descriptive term “student loans” has been added to the end of the mark; and (3)
the gTLD “.com” has been added. As stated above, removing a letter from a mark
does not render a domain name distinct from that mark, nor does adding either a
descriptive term or a gTLD. Therefore,
the Panel finds that Respondent’s <citibanstudentloans.com>
domain name is not sufficiently distinguished from Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See Compaq Info. Techs. Group, L.P., supra; see also Am. Online, Inc., supra; see also
Isleworth Land Co., supra.
None of the above disputed domain names are sufficiently
distinguishable from Complainant’s mark, and the Panel determines that each
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), after Complainant makes a prima facie case against Respondent, the burden shifts to Respondent to show evidence that it does have rights and legitimate interests in the disputed domain names. The Panel finds that Complainant made a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding 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”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent’s failure to respond to the Complaint leads the
Panel to presume that Respondent lacks rights and legitimate interests in the
disputed domain names. However, the
Panel in its discretion chooses to consider the elements of Policy ¶ 4(c)
before making a final determination as to Respondent’s rights and legitimate
interests. See Eroski, So. Coop. v.
Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can
be inferred that by defaulting Respondent showed nothing else but an absolute
lack of interest on the domain name.”); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the panel to draw adverse inferences from the
respondent’s failure to reply to the complaint).
Complainant contends that Respondent has shown no evidence of
having been the owner or beneficiary of the CITIBANK mark, or of being commonly
known by the disputed domain names. The
WHOIS record for the disputed domain names lists Respondent as “Eli Shoval a/k/a Shoval –ds.” Given this
evidence and that Respondent has failed to show any evidence contrary to
Complainant’s contentions, the Panel finds that Respondent is neither the owner
nor the beneficiary of the CITIBANK mark nor commonly known by any of the
disputed domain names pursuant to Policy ¶ 4(c)(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.”).
Respondent’s disputed domain names resolve to various websites featuring links to financial services that compete with Complainant’s business. Complainant contends that Respondent is receiving click-through fees through the use of the disputed domain names by diverting Internet users searching for Complainant to Complainant’s competitors. Absent any evidence to the contrary, the Panel finds that Respondent’s use of the disputed domain names is 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). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“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).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the disputed domain names to divert Internet users to websites that offer financial services competing with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business, and therefore establishes Respondent’s registration and use of the disputed domain names 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 the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Complainant contends that Respondent is receiving click-through fees because the websites resolving from the disputed domain names feature links to Complainant’s competitors’ websites. The Panel finds that Respondent has taken advantage of the similarity between Complainant’s CITIBANK mark and the disputed domain names to create a likelihood of confusion with Complainant’s mark in order to commercially benefit from this confusion. Therefore, the Panel further considers this to be evidence of Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv). See 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.’”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“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.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED, in part, and DISMISSED, in part, without prejudice to refile.
Accordingly, it is Ordered that the <wwwcitybank.com>, <citibankstudentlons.com>, and <citibanstudentloans.com> domain names be TRANSFERRED from Respondent to Complainant.
Further, the case as to domain names: <citibancreditcard.com>, <citibankcerditcard.com>, <citibankcrdeitcard.com>, <citibankcreitcard.com>, and <wwwcitibankstudentloans.com> is dismissed without prejudice to refile with appropriate proof of their having been redeemed by Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 18, 2008.
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