Citigroup Inc. v. Thi Thanh Nguyen d/b/a VPDD UBGM ltd
Claim Number: FA1012001361943
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady, Jr. of Greenberg Traurig, LLP, Illinois, USA. Respondent is Thi Thanh Nguyen d/b/a VPDD UBGM ltd (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <careersciticards.com>, <citigrou.net>, <citifancialauto.com>, <wwwcitigroup.net>, <citcentercareers.com>, <citicentercareer.com>, <citicentercareers.com>, <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com>, registered with Moniker Online Services, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2010; the National Arbitration Forum received payment on December 7, 2010.
On December 7, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <careersciticards.com>, <citigrou.net>, <citifancialauto.com>, <wwwcitigroup.net>, <citcentercareers.com>, <citicentercareer.com>, <citicentercareers.com>, <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@careersciticards.com, postmaster@citigrou.net, postmaster@citifancialauto.com, postmaster@wwwcitigroup.net, postmaster@citcentercareers.com, postmaster@citicentercareer.com, postmaster@citicentercareers.com, postmaster@citycentercarers.com, postmaster@citycentercreers.com, and postmaster@wwwcitycentercareers.com. Also on December 8, 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 December 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 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 <careersciticards.com>, <citigrou.net>, <citifancialauto.com>, <wwwcitigroup.net>, <citcentercareers.com>, <citicentercareer.com>, <citicentercareers.com>, <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com> domain names are confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <careersciticards.com>, <citigrou.net>, <citifancialauto.com>, <wwwcitigroup.net>, <citcentercareers.com>, <citicentercareer.com>, <citicentercareers.com>, <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com> domain names.
3. Respondent registered and used the <careersciticards.com>, <citigrou.net>, <citifancialauto.com>, <wwwcitigroup.net>, <citcentercareers.com>, <citicentercareer.com>, <citicentercareers.com>, <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc., owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 691,815 issued January 19, 1960) and the Copyright Office of Viet Nam (“COV”) (Reg. No. 4-0037382-000 issued May 29, 2001) for its CITI mark. Complainant uses its CITI mark in connection with banking and financial services.
Respondent registered the <careersciticards.com>, <citigrou.net>, <citifancialauto.com>, <wwwcitigroup.net>, <citcentercareers.com>, <citicentercareer.com>, <citicentercareers.com>, <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com> domain names no earlier than July 23, 2003. The <careersciticards.com>, <citcentercareers.com>, <citicentercareer.com>, <citicentercareers.com>, <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com> domain names resolve to websites containing hyperlinks to third-parties unrelated to Complainant. The <citigrou.net> and <citifancialauto.com> domain names resolve to website containing hyperlinks to Complainant and Complainant’s competitors. The <wwwcitigroup.net> domain name fails to resolve to an active website.
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 provides evidence that it holds multiple trademark registrations with the USPTO (e.g., Reg. No. 691,815 issued January 19, 1960) and COV (Reg. No. 4-0037382-000 issued May 29, 2001) for its CITI mark. The Panel finds this evidence to be sufficient to establish rights in the CITI mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that the <careersciticards.com>, <citigrou.net>, <citifancialauto.com>, <wwwcitigroup.net>, <citcentercareers.com>, <citicentercareer.com>, and <citicentercareers.com> domain names are confusingly similar to Complainant’s CITI mark. The disputed domain names all incorporate Complainant’s CITI mark in its entirety and simply add: generic terms, such as “careers,” “auto,” “center,” and “career;” descriptive terms, such as “cards,” and “group,” or misspelled terms “financial” and “group;” the prefix “www;” and the generic top-level domain (“gTLD”) “.com” or “.net.” The Panel finds that such additions do not remove the disputed domain names from the realm of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters “www” are not distinct in the “Internet world” and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel concludes that Respondent’s <careersciticards.com>, <citigrou.net>, <citifancialauto.com>, <wwwcitigroup.net>, <citcentercareers.com>, <citicentercareer.com>, and <citicentercareers.com> domain names are confusingly similar to Complainant’s CITI mark under Policy ¶ 4(a)(i).
Complainant also contends the <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com> domain names are confusingly similar to Complainant’s CITI mark. Complainant argues that the disputed domain names contain a misspelled version of Complainant’s mark with the addition of generic and descriptive terms. The <wwwcitycentercareers.com> domain name also incorporates the prefix “www.” All of the disputed domain names include the gTLD “.com.” The Panel determines that the alterations to Complainant’s mark are insufficient to distinguish the disputed domain names from Complainant’s CITI mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds the <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com> domain names are confusingly similar to Complainant’s CITI mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the disputed domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The WHOIS information identifies the domain name registrant as “Thi Thanh Nguyen d/b/a VPDD UBGM ltd,” which the Panel determines is not similar to any of the disputed domain names. Complainant asserts that it has not authorized Respondent to use its CITI mark. The Panel fails to find any evidence in the record that demonstrates that Respondent is commonly known by any of the disputed domain names. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain names under 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant provides screen shots of the websites resolving from the <careersciticards.com>, <citcentercareers.com>, <citicentercareer.com>, <citicentercareers.com>, <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com> domain names. The screen shots reveal websites that contain hyperlinks to third-party career websites that appear to be unrelated to Complainant’s banking and financial business. Complainant alleges that Respondent receives click-through fees from the aforementioned hyperlinks. Thus, the Panel finds that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
According to the screen shots of the websites resolving from the <citigrou.net> and <citifancialauto.com> domain names, Respondent is using the two domain names to host hyperlinks to third-parties that compete with Complainant in the banking and financial industries. The Panel further presumes that Respondent receives click-through fees from these hyperlinks as well. The Panel determines that such a use 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The <wwwcitigroup.net> domain name fails to resolve to an active website. Respondent’s failure to make an active use of the disputed domain name ensures that Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <citigrou.net> and <citifancialauto.com> domain names resolve to websites that contain hyperlinks to Complainant’s competitors. The Panel presumes that such a use disrupts Complainant’s business as Internet users interested in Complainant may encounter Complainant’s competitors due to Respondent’s use of the disputed domain names. Therefore, the Panel concludes that Respondent’s use of the <citigrou.net> and <citifancialauto.com> domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant alleges that Respondent receives click-through fees from the hyperlinks found on the websites resolving from the <citigrou.net>, <citifancialauto.com>, <careersciticards.com>, <citigrou.net>, <citifancialauto.com>, <citcentercareers.com>, <citicentercareer.com>, <citicentercareers.com>, <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com> domain names. Due to the confusing similarity between the disputed domain names and Complainant’s CITI mark, Internet users may become confused as to Complainant’s affiliation with the disputed domain names. Respondent is attempting to profit from that confusion. The Panel finds that Respondent’s registration and use of the disputed domain names is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith) Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
The <wwwcitigroup.net> domain name does not resolve to an active website. The Panel finds Respondent’s failure to make an active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <careersciticards.com>, <citigrou.net>, <citifancialauto.com>, <wwwcitigroup.net>, <citcentercareers.com>, <citicentercareer.com>, <citicentercareers.com>, <citycentercarers.com>, <citycentercreers.com>, and <wwwcitycentercareers.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 10, 2011
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