Citigroup Inc. v. Semkin Aleksei Sergeevich
Claim Number: FA1605001674366
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Semkin Aleksei Sergeevich (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.moscow>, registered with Registrar of Domain Names REG.RU LLC.
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 Forum electronically on May 11, 2016; the Forum received payment on May 11, 2016.
On May 12, 2016, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <citi.moscow> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC 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 May 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2016 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@citi.moscow. Also on May 17, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
The Panel finds that the language requirement of UDRP Rule 11(a) has been met and determines that this proceeding will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <citi.moscow> domain name is identical to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citi.moscow> domain name.
3. Respondent registered and uses the <citi.moscow> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a registration for its CITI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,181,467 registered December 8, 1981), used in the banking industry.
Respondent registered the <citi.moscow> domain name on December 10, 2014, and does not make an active use of it, other than to offer it for sale.
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(f), 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 (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 has rights in the CITI mark based on registration of the mark with the USPTO. USPTO registration of a mark is sufficient to demonstrate rights in the registered mark even when Respondent does not operate in the United States. See Viber Media S.à r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”).
Respondent’s <citi.moscow> domain name includes the CITI mark in its entirety and only adds the gTLD “.moscow.” Panels have held that ubiquity of gTLDs has caused them to be a non-distinguishing feature. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Thus, the Panel finds that Respondent’s <citi.moscow> domain name is identical to Complainant’s CITI 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 (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 (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 not been authorized to use the CITI mark, nor has Respondent been commonly known by the disputed domain name. The WHOIS information lists “Semkin Aleksei Sergeevich” as the registrant of record, which does not resemble the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of authorization to use a mark. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Complainant contends that Respondent has failed to make an active use of the disputed domain and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes that Respondent’s <citi.moscow> domain name resolves to the message “THIS DOMAIN IS FOR SALE.” Prior panels have found that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel finds that Respondent lacks rights or legitimate interests in the <citi.moscow> domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant shows that Respondent offered to sell Complainant the disputed domain name. The Panel finds that this is evidence of bad faith under Policy ¶ 4(b)(i). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).
Complainant also contends that, in light of the fame and notoriety of Complainant's CITI mark, it is inconceivable that Respondent could have registered the <citi.moscow> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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 <citi.moscow> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 13, 2016
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