Citigroup Inc. v. sarala kunchapu
Claim Number: FA1605001674383
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, Washington D.C., USA. Respondent is sarala kunchapu (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.ooo>, registered with 101domain, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2016; the Forum received payment on May 11, 2016.
On May 11, 2016, 101domain, Inc. confirmed by e-mail to the Forum that the <citi.ooo> domain name is registered with 101domain, Inc. and that Respondent is the current registrant of the name. 101domain, Inc. has verified that Respondent is bound by the 101domain, 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 May 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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.ooo. Also on May 12, 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.
A timely Response was received and determined to be complete on May 27, 2016.
On June 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant is an American multinational banking and financial services corporation headquartered in New York, New York. As of 2014, Complainant was the fourteenth largest bank holding company in the world by assets and the seventh largest by market capitalization. Complainant has registered the CITI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,181,467, registered December 8, 1981), which establishes Complainant’s rights in its mark. The <citi.ooo> domain name is identical to Complainant’s mark as it wholly incorporates the CITI mark and merely adds the generic top-level domain (“gTLD”) “.ooo.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name resolves to a parked page. Further, Respondent has offered the disputed domain to Complainant for $120,000.00.
3. Respondent has registered and is using the disputed domain name in bad faith. Respondent has offered the domain for sale, a violation of Policy ¶ 4(b)(i). Respondent has registered the <citi.ooo> domain name to prevent Complainant from reflecting its CITI mark in the “.ooo” gTLD. Finally, because of the global fame of Complainant’s mark, it is clear that Respondent registered the domain with actual knowledge of the CITI mark.
B. Respondent’s Contentions
1. Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
2. Respondent intends to make a legitimate use of the <citi.ooo> domain name.
3. Respondent purchased the <citi.ooo> domain name in good faith after the sunrise period for gTLD “.ooo” domains had expired. Respondent has not used Complainant’s mark on the resolving webpage for <citi.ooo> domain name. Nor has Respondent suggested an affiliation between it and Complainant. Complainant has acted in bad faith by attempting to seize the disputed domain name after Respondent lawfully acquired it.
1. Respondent’s <cit.ooo> domain name is confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <cit.ooo> domain name.
3. Respondent registered or used the <cit.ooo> domain name 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 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 is an American multinational banking and financial services corporation headquartered in New York, New York. As of 2014, Complainant was the fourteenth largest bank holding company in the world by assets and the seventh largest by market capitalization. Complainant has registered the CITI mark with the USPTO (e.g., Reg. No. 1,181,467, registered December 8, 1981). Complainant contends that its USPTO registration establishes its rights in its mark. See Compl., at Ex. D. The Panel agrees that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i) even if Respondent does not operate in the country of Complainant’s trademark registration. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Accordingly, the Panel finds that Complainant has proven its rights in the CITI mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <citi.ooo> domain name is identical to Complainant’s mark as it wholly incorporates the CITI mark and merely adds the gTLD “.ooo.” Previous panels have found that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s CITI mark. Further, Complainant argues that Respondent is not licensed or authorized to use Complainant’s CITI mark. The Panel notes that the WHOIS information lists “sarala kunchapu” as registrant of record. Respondent has failed to rebut Complainant’s contentions concerning Policy ¶ 4(c)(ii). As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant has submitted screen captures of the resolving parked webpage at <citi.ooo>. Previous panels have held that a respondent’s use of a domain to divert Internet users to a website unrelated to the complainant’s mark is not 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant has provided the Panel with Exhibits N through U, e-mail exchanges between the parties, which it alleges establish Respondent’s willingness to sell the <citi.ooo> domain name. A respondent’s willingness to sell a disputed domain name for more than its out-of-pocket costs has been held to establish that it lacked rights and legitimate interests. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges that Respondent has offered the domain for sale for in excess of its out-of-pocket cost, a violation of Policy ¶ 4(b)(i). Complainant’s exhibits N through V purportedly show Respondent’s willingness to sell the disputed domain name for $120,000.00 to complainant and $9,999.00 to the public. Previous panels have agreed that a respondent’s attempt to sell a domain for an amount in excess of its out-of-pocket costs to acquire the domain constitutes bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Therefore, the Panel finds that Respondent registered and is using the disputed domain in bad faith per Policy ¶ 4(b)(i).
Complainant contends that Respondent has engaged in a pattern of registering and using domains in bad faith. Complainant has provided the Panel with the WHOIS information of several other domain names Respondent has registered containing third-party trademarks. See Compl., at Ex. W. Panels have found bad faith under Policy ¶ 4(b)(ii) where a respondent has registered multiple infringing domain names containing third-party trademarks or service marks. See Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses). Accordingly, the Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).
Finally, because of the global fame of Complainant’s mark, it is clear that Respondent registered the domain with actual knowledge of the CITI mark. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. Complainant asserts that Respondent would have received a Trademark Claims notification prior to being allowed to complete registration of the <citi.ooo> domain name. It is Complainant’s position that this notification put Respondent on notice as to Complainant’s rights in the CITI mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). As such, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
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.ooo> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 15, 2016
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