Citadel LLC and its related entity, KCG IP Holdings LLC v. JOEL LESPINASSE
Claim Number: FA1412001593973
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 JOEL LESPINASSE (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citadellefunding.net> and <citadellefunding.com>, registered with TLDS L.L.C. d/b/a SRSPlus.
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 December 8, 2014; the National Arbitration Forum received payment on December 8, 2014.
On December 9, 2014, TLDS L.L.C. d/b/a SRSPlus confirmed by e-mail to the National Arbitration Forum that the <citadellefunding.net> and <citadellefunding.com> domain names are registered with TLDS L.L.C. d/b/a SRSPlus and that Respondent is the current registrant of the names. TLDS L.L.C. d/b/a SRSPlus has verified that Respondent is bound by the TLDS L.L.C. d/b/a SRSPlus 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 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2014 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@citadellefunding.net, postmaster@citadellefunding.com. Also on December 9, 2014, 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 January 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <citadellefunding.net> and <citadellefunding.com> domain names are confusingly similar to Complainant’s CITADEL mark.
2. Respondent does not have any rights or legitimate interests in the <citadellefunding.net> and <citadellefunding.com> domain names.
3. Respondent registered and uses the <citadellefunding.net> and <citadellefunding.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered its CITADEL mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,213,943, registered Feb. 27, 2007), and uses it to identify Complainant’s financial services.
Respondent registered the <citadellefunding.net> and the <citadellefunding.com> domain names on September 26, 2014, and uses them to resolve to a private fund management firm offering financial and investment consulting services in competition with Complainant.
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 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.
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.”).
The Panel finds that Complainant’s USPTO registration for the CITADEL mark adequately demonstrates rights in the mark for purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <citadellefunding.net> and <citadellefunding.com> domain names are confusingly similar to the CITADEL mark as they fully incorporate the mark with the additions of the term “funding,” extra letters, and a gTLD. The Panel notes that the added term “funding” is descriptive of Complainant’s business, and therefore serves to increase confusion. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The added letters “l” and “e” in the disputed domain names have no distinguishing value especially given the phonetic similarity to Complainant’s CITADEL mark. See Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to the complainant’s mark); see also Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”). The addition of a gTLD, such as “.net” and “.com,” is irrelevant to the confusing similarity analysis. See 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). Accordingly, the Panel finds that the <citadellefunding.net> and <citadellefunding.com> domain names are confusingly similar to Complainant’s CITADEL mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have 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 argues that Respondent has no rights or legitimate interests in the dispute domain names and is not commonly known by the disputed domain names. Complainant states that it has not authorized Respondent’s use of the mark. The WHOIS information identifies “Joel Lespinasse” as the registrant of the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also argues that Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Complainant argues that the <citadellefunding.com> domain name resolves to a website purporting to be a private fund management firm offering financial and investment consulting services in competition with Complainant. The Panel agrees that Respondent’s use of the <citadellefunding.com> domain name to promote services in competition with Complainant is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name. 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).
The <citadellefunding.net> domain name resolves to a parked website offering computer software products bearing the “Parallels” mark, including “Parallels® Desktop for Mac” and “Parallels® Automation.” The Panel finds that Respondent’s use of the <citadellefunding.net> domain name for commercial links unrelated to Complainant does not constitute a bona fide offering, or a legitimate noncommercial or fair use within the dictates of Policy ¶¶ 4(c)(i) and (iii). See 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has a history of bad faith, demonstrated by prior UDRP decision where the domain name <citadelfunding.net> was ordered transferred from Respondent to Complainant. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Nat. Arb. Form Oct. 15, 2014). The Panel finds that this constitutes evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Complainant asserts that the <citadellefunding.com> domain name resolves to a website offering services in competition with Complainant, which disrupts Complainant’s business in violation of Policy ¶ 4(b)(iii). The Panel agrees and finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant further argues that Respondent is using the disputed domain names to mislead users as to Complainant’s affiliation with the disputed domain names, and attempts to monetize this confusion through a website offering services in competition with Complainant as well as a parked website featuring commercial links. The Panel agrees and finds 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); see also 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)).
Finally, Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark and its rights therein. Complainant claims that the prior UDRP case against Respondent was pending at the time these domain names were registered. The Panel notes that the <citadellefunding.net> and <citadellefunding.com> domain names were registered on September 26, 2014, and that the referenced UDRP decision involving these same parties was decided on October 15, 2014. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Nat. Arb. Form Oct. 15, 2014). Under these circumstances, the Panel finds that Respondent was on notice of Complainant’s CITADEL mark when it registered the disputed domain names and therefore finds additional evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citadellefunding.net> and <citadellefunding.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 8, 2015
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