Citadel LLC and its related entity, KCG IP Holdings, LLC v. -
Claim Number: FA1310001522837
Complainant is Citadel LLC and its related entity, KCG IP Holdings, LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is - (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citidelgroup.com>, registered with TUCOWS, INC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2013; the National Arbitration Forum received payment on October 4, 2013.
On October 4, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <citidelgroup.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2013 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@citidelgroup.com. Also on October 4, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two Complainants in this matter: Citadel LLC and its related entity, KCG IP Holdings, LLC. Complainant Citadel LLC uses the CITADEL mark under license from its related entity, KCG IP Holdings, LLC.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, so the Panel elects to treat them all as a single entity in this proceeding. Throughout the decision below, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Trademark/Service Mark Information (ICANN Rule 3(b)(viii)):
Citadel LLC uses the CITADEL trademarks under license from its related entity, KCG IP Holdings, LLC. Citadel has sought to protect its investment in its brand by, among other things, registering certain trademarks with the United States Patent and Trademark Office (“USPTO”). Complainant has made extensive use of these marks by providing its services in the United States and around the world.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds (ICANN Rule 3(b)(ix)):
a. Complainant and Its Marks.
Citadel was founded in 1990 and, since then, it has grown into one of the world’s largest and most sophisticated alternative investment institutions. Citadel employs more than one thousand professionals worldwide and has offices worldwide. Its investors include endowments, pension funds, foundations and other institutional investors, as well as high net worth individuals.
b. Respondent and Its Actions.
Respondent registered the Offending Domain on September 17, 2013. The Offending Domain was registered after Complainant began extensive marketing of its goods and services under its marks. Complainant has not given Respondent any license, permission, or authorization by which Respondent could make use of any of its marks.
Before Complainant requested that the registrar disable the DNS, the Offending Domain resolved to a website that has images, information, trademarks and other content merely copied directly from Citadel’s website. Such use does not constitute bona fide or legitimate business use or a protected non-commercial or fair use of the Offending Domain.
c. The Offending Domain is confusing similar to the CITADEL Marks. (ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i))
The Offending Domain is confusingly similar to Complainant’s CITADEL mark because the disputed domain name merely replaces the letter “a” with “i” and adds the generic term “group[1]” and the generic top-level domain (“gTLD”) “.com.” See Wells Fargo & Company v. David Ghou, FA 1507686 (Nat. Arb. Forum July 28, 2013) (finding the <wellsvargo.com> domain name confusingly similar to the WELLS FARGO mark where (1) the letter “f” is replaced with the letter “v,” (2) the space is removed and (3) the top-level domain “.com” appended thereto); see also Esurance Insurance Services, Inc. (formerly known as Esurance Inc.) v. Bin G Glu, FA 1327841 (Nat. Arb. Forum July 9, 2010) (holding that the <esuarnce.com> domain name was confusingly similar to the complainant’s ESURANCE mark where it merely transposed the letters “a” and “r” and merely added a generic top-level domain).
d. Respondent Has No Rights or Legitimate Interests in the Offending Domain (ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii))
Whois Information identified the Respondent as Zenith Jack a/k/a Exabytes Network Private Limited. Complainant has not given Respondent any license, permission, or authorization by which Respondent could make use of any of its mark. And Respondent has never used any trademark or service mark similar to the Offending Domain by which they may have come to be known, other than the infringing use noted herein. Thus, Respondent lacks both rights and legitimate interests with respect to the domain at issue. See Guardian News & Media Limited v. D-Max Limited, FA 1514364 (Nat. Arb. Forum Sept. 23, 2013) (finding that Respondent had not established rights or legitimate interests to the disputed domain name where Respondent lacked permission to use Complainant’s mark and the evidence in the WHOIS information showed Respondent is known by a different name); see also St. Lawrence Univ. v. Nextnet Tech, Inc., FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (finding that respondent had no right nor legitimate interests in a disputed domain name absent evidence in the record indicating that the respondent was commonly known by the disputed domain name). Here, Complainant, not Respondent, is commonly known by the trademark or service marks similar to the Offending Domain.
Respondent has never operated any bona fide or legitimate business under the Offending Domain and is not making a protected non-commercial or fair use of the Offending Domain. Respondent’s lack of rights and legitimate interests is evident by Respondent’s attempt to pass itself off as being affiliated with Complainant. In fact, Respondent displays on its website Complainant’s logo, information about Complainant, and images and other content merely copied from Complainant’s website. See Morgan Stanley v. Dominec Williams, FA 1426319 (Nat. Arb. Forum Feb. 20, 2012) (finding that Respondent’s attempt to pass itself off as Complainant where respondent displays on its website Complainant’s logo and information about Complainant is evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii)); see also Exxon Mobil Corporation v. amadi chibuike / exponentgroup, FA 1462424 (Nat. Arb. Forum October 17, 2012 ) (holding that use of a domain name to attempt to deceive Internet users as to the sponsorship of the website presumably for some sort of commercial gain 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)).
Lastly, Complainant has not granted Respondent any license, permission, or authorization by which Respondent could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks. See B&M Noble Co. d.b.a. Noble Hardwoods, Inc. v. Max Ertem, FA 1469572 (Nat. Arb. Forum December 12, 2012) (finding that respondent had no legitimate rights in complainant’s “DUCHATEAU” mark, in part, because complainant did not grant respondent any permission, license, authority, assignment or any other right to use the mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that respondent had no rights to or legitimate interests in complainant’s domain name, where there was no evidence respondent had authorization or license to register or use a domain name incorporating its mark).
e. Respondent Registered and is Using the Offending Domain in Bad Faith (ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii))
Respondent registered the Offending Domain with actual knowledge of Complainant’s rights in the CITADEL marks. Given the considerable registration and use of the CITADEL marks, Respondent knew or should have known of such marks at all relevant times. Panels routinely find bad faith registration within the meaning of Policy ¶4(a)(iii) where Respondents have registered a confusingly similar domain name. See Univision Communications Inc. v. Forthright Media / Michael Piotrowski, FA 1470373 (Nat. Arb. Forum January 2, 2013) (finding that Respondent had actual knowledge of complainant’s mark at the time that it registered the <univision19.com> domain name, based on the notoriety of Complainant’s UNIVISION mark and the fact that Complainant had registered the mark with the USPTO and numerous other trademark offices throughout the world); see also Lockheed Martin Corporation v. Morse Mark / Lockheed Emerson Group Limited, FA 1471066 (Nat. Arb. Forum December 27 2012) (finding that Respondent registered the disputed domain name in bad faith under ¶4(a)(iii) because Respondent had actual knowledge of Complainant’s mark at the time that it registered the disputed domain name where Complainant had a registered mark with numerous trademark offices and the domain name was confusingly similar).
Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iv), by attracting Internet users to its website for commercial gain by using a misspelling of Complainant’s mark. See Exxon Mobil Corporation v. amadi chibuike / exponentgroup, FA 1462424 (Nat. Arb. Forum Oct. 17, 2012 ) (finding the domain name <exonoilandgas.com> was registered and used in bad faith where it was reasonable to presume that respondent benefits financially from its website where there is an absence of any evidence to the contrary); see also Liberty Mutual Insurance Company v. Richard Jones, FA 1330673 (Nat. Arb. Forum July 23, 2010) (finding that Respondent’s use of the confusingly similar <libertymutuel.com> domain name, a misspelled version of Complainant’s LIBERTY MUTUAL mark and official <libertymutual.com> website, to intentionally attract Internet users to Respondent’s website for commercial gain is evidence of bad faith registration and use under Policy ¶4(b)(iv)).
Further, Respondent’s activities in using the Offending Domain to direct users to a website away from their intended destination is disruptive to Complainant’s business and therefore conclusive evidence that Respondent registered and is using the Offending Domain in bad faith pursuant to policy ¶4(b)(iii). See Target Brands, Inc v. Abadaba S.A., FA 1505082 (Nat. Arb. Forum July 30, 2013) (finding evidence of bad faith under Policy ¶4(a)(iii) where Respondent diverted users who misspelled Complainant’s mark away from their intended destination); see also American Express Marketing & Development Corp. v. chen chao, FA 1438527 (Nat. Arb. Forum (May 21, 2012) (finding that Respondent acted in bad faith when disrupting Complainant’s business pursuant to Policy ¶4(b)(iii) where Respondent had directly copied protected trademarks, including the TRAVEL + LEISURE mark, as well as copyrighted content, directly from Complainant’s site and placed it on the <travelreleisure.com> site).
There is no reason for Respondent to have registered the Offending Domain other than to trade off the reputation and goodwill of Complainant’s marks. As such, the nature of the domain itself evidences bad faith registration and use. See Victoria’s Secret Stores Brand Management, Inc. v. Sam Taylor, FA 1310572 (Nat. Arb. Forum April 19, 2010 (finding that Respondent had taken predatory advantage of Complainant’s goodwill and reputation in the VICTORIA’S SECRET trademark by establishing a website that contained a virtually exact replica of the official Victoria’s Secret web site); see also LIMITED STORES, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin FA 1491426 (Nat. Arb. Forum April 24, 2013) (finding bad faith where the respondent had actual knowledge of the mark and Complainant’s rights due to the fame of Complainant’s mark).
Finally, even if Respondents argue that they were somehow unaware of Complainant’s rights in the relevant marks, had Respondents conducted even a preliminary trademark search, it would have found Complainant’s various trademark registrations in the CITADEL marks and the websites associated with the marks, and numerous additional references in commerce, on the Internet, and in publications, evidencing Complainant’s use of its marks in connection with the Complainant’s services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
Paragraph 4(a) of the Policy requires Complainant to prove the following three elements to obtain an order cancelling or transferring a domain:
(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.
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.”).
Complainant’s rights in the CITADEL mark are sufficiently demonstrated by its United States Patent & Trademark Office (“USPTO”) registration (Reg. No. 3,213,943 registered February 27, 2007). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”). Complainant’s evidence of USPTO registration demonstrates its rights in the mark under Policy ¶4(a)(i).
Complainant claims the <citidelgroup.com> domain name is confusingly similar to its CITADEL mark, claiming the domain name merely replaces the letter “a” in the mark with the letter “i,” and adds the generic term “group,” as well as the generic top-level domain (“gTLD”) “.com.” The misspelling a mark by replacing one letter with another does not normally create a unique domain name for the purposes of the Policy. 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”). Adding a generic term does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Adding a gTLD does not affect the analysis regarding confusing similarity between the mark and the domain name. See 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.”). The <citidelgroup.com> domain name is confusingly similar to the CITADEL mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. 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 UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
Complainant has not granted a license or permission for Respondent to use the CITADEL mark. The WHOIS information now shows “-” as the registrant, which is not the same as the disputed domain name. No evidence exists to demonstrate Respondent is commonly known by the domain name as envisioned by Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims Respondent has not operated a bona fide or legitimate business under the <citidelgroup.com> domain name, arguing Respondent displays on its resolving website numerous features taken directly from Complainant’s website, including Complainant’s logo, information about Complainant, images and other content. The web site includes video content, statements such as “Watch High-Speed Trading In Action; Citadel’s industry leadership featured on CNNMoney,” and “Citadel’s Tom Miglis Named to Institutional Investor’s Masters of Tech Universe List.” Respondent has not disputed this claim. Respondent is attempting to pass itself off as Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶4(c)(i) or 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
In fact, Respondent has not properly registered the disputed domain name because it has not disclosed the registrant’s name. As such, Respondent cannot acquire any rights to the domain name because it has not acknowledged ownership of the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <citidelgroup.com> domain name in bad faith under Policy ¶4(b)(iii) because Respondent’s activities disrupt Complainant’s business. However, Complainant does not demonstrate Respondent is a competitor. This means Respondent has not registered and used the domain name in bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent intentionally attracts Internet users to its counterfeit website for commercial gain (although it does not specify exactly how Respondent gains). The Panel agrees and finds Respondent’s registration and use of the domain name is in bad faith pursuant to Policy ¶4(b)(iv). See 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).
Complainant claims Respondent appropriates material originally posted on Complainant’s own website and uses it on the counterfeit website resolving from the <citidelgroup.com> domain name. While Complainant has not provided its own web site content, Respondent has failed to refute this claim. Respondent’s bad faith registration under Policy ¶4(a)(iii) is shown as a result of its attempt to pass itself off as Complainant. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Complainant claims Respondent had actual knowledge of Complainant’s CITADEL mark at the time the <citidelgroup.com> domain name was registered. Since Respondent appears to have copied Complainant’s web site, this is true. Respondent had actual knowledge of Complainant’s rights in the CITADEL mark, thereby proving its bad faith registration under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Respondent did not have accurate WHOIS information. In fact, Respondent failed to give ANY WHOIS information about who registered the disputed domain name. In the commercial context, this raises the rebuttable presumption of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <citidelgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 5, 2013
[1] Citadel’s primary website remains www.citadelgroup.com The Offending Domain is merely a typo variation of Citadel’s primary domain name.
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