Citadel Investment Group L.L.C. and its related entity, KCG IP Holdings, LLC v. CItadel
Claim Number: FA1010001351975
Complainant is Citadel Investment Group L.L.C. and its related entity, KCG IP Holdings, LLC ("Complainant"), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is CItadel ("Respondent"), Belgium.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelg.com>, registered with MISK.COM, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2010; the National Arbitration Forum received payment on October 14, 2010.
On October 15, 2010, MISK.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <citadelg.com> domain name is registered with MISK.COM, INC. and that Respondent is the current registrant of the name. MISK.COM, INC. has verified that Respondent is bound by the MISK.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@citadelg.com. Also on October 15, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 benefit of any response from the Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citadelg.com> domain name is confusingly similar to Complainant’s CITADEL mark.
2. Respondent does not have any rights or legitimate interests in the <citadelg.com> domain name.
3. Respondent registered and used the <citadelg.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citadel Investment Group L.L.C. and its related entity, KCG IP Holdings, LLC, was founded in 1990 and operates as an alternative investment institution with over 1,000 employees and offices worldwide. Complainant’s investors include endowments, pension funds, foundations, and other institutional investors, as well as high net worth individuals. Complainant holds multiple trademark registrations for its CITADEL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,812,459 issued February 10, 2004).
Respondent, CItadel, registered the disputed domain name on June 8, 2010. The disputed domain name resolves to a website which promotes competing financial services.
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 contends it has rights in its CITADEL mark based on its registration of the mark with the USPTO (e.g., Reg. No. 2,812,459 issued February 10, 2004). The Panel agrees and finds that Complainant’s registration of the mark with a governmental trademark authority, such as the USPTO, is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel also finds that Complainant need not have registered the mark in the country in which Respondent resides to maintain rights in the mark under Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant asserts that Respondent’s <citadelg.com> domain name is confusingly similar to Complainant’s CITADEL mark. Respondent’s disputed domain name incorporates the entirety of Complainant’s mark, adds the letter “g,” and also adds the “.com” generic top-level domain (“gTLD”). The Panel finds that the addition of a single letter, along with a gTLD, do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <citadelg.com> domain name is confusingly similar to Complainant’s CITADEL mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the <citadelg.com> domain name. Upon a showing of a sufficient prima facie case, the burden of proof then shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has made a prima facie case based on the arguments contained in the Complaint. Respondent has failed to respond to these proceedings which allows the Panel to presume that the arguments contained in the Complaint are true and that Respondent does indeed lack rights and legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).
Complainant states that it has not granted Respondent any license, permission, or authorization by which Respondent could use any domain name registrations that are confusingly similar to Complainant’s CITADEL mark. Furthermore, Complainant argues that Respondent has never used any trademark or service mark similar to the <citadelg.com> domain name. Although the WHOIS information for the disputed domain name lists the registrant as “CItadel,” there is no other evidence in the record that would lead the Panel to the conclusion that Respondent is commonly known by the disputed domain name. Therefore, without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) even where, as here, Respondent appears to be commonly known by the disputed domain name in the WHOIS information. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant alleges that Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant has provided screenshots of Respondent’s resolving website evidencing Respondent’s use of the disputed domain name to offer financial services that compete with those offered by Complainant. The Panel presumes that Respondent benefits commercially from its operations of the website resolving from the <citadelg.com> domain name. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to offer services that directly compete with Complainant is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s registration and use of the <citadelg.com> domain name to offer financial services in competition with Complainant constitutes a disruption of Complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”). Accordingly, the Panel concludes that findings of bad faith registration and use under Policy ¶ 4(b)(iii) are appropriate.
Complainant alleges that Respondent’s registration and use of the confusingly similar <citadelg.com> domain name attempts to convert Internet traffic to Respondent’s commercial website and is explicit evidence of bad faith. The Panel agrees and finds that Respondent’s registration and use of the disputed domain name amounts to bad faith under Policy ¶ 4(b)(iv) as Respondent’s domain name attempts to intentionally attract Internet users to its website, presumably for commercial gain, by creating a likelihood of confusion among Internet users as to Complainant’s sponsorship or, or affiliation with, the disputed domain name, resolving website, and financial services offered therein. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <citadelg.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 22, 2010
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