Citigroup Inc. v. yang xiang
Claim Number: FA1605001674421
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is yang xiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citibank.top> (the “Domain Name”), registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Dawn Osborne of Palmer Biggs Legal 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, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <citibank.top> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 16, 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@citibank.top. Also on May 16, 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 Dawn Osborne of Palmer Biggs Legal 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a multinational banking and financial services company with global headquarters in New York. It has trade mark registrations for CITIBANK in China and the United States and has used the mark in China where the Respondent is based since at least 1983 and in the United States since 1959. It also owns the domain names citibank.com and citibank.cn which points to the Complainant’s Chinese language site. The CITIBANK mark is famous and is an indication of high quality and origin associated exclusively with the Complainant. It has been recorded in the Trademark Clearinghouse and so any registrant in any new gTLD would get a Trademark Claims Notice.
The Domain Name was registered in 2014 during the Trademark Claims Period. The Respondent would have received a Trademark Claims Notice of the Complainant’s rights but proceeded to register the Domain Name.
The Domain Name has never resolved to an active website. The Domain Name fully incorporates the Complainant’s mark and is identical to the CITIBANK mark. The addition of a gTLD is insufficient to escape a finding of confusing similarity.
The Respondent has no rights or legitimate interests in the Domain Name. Respondent has never been authorised by Complainant to use the CITIBANK mark in any manner. The Domain Name does not reflect the Respondent's common name. It has never had any substantive content attached to it so cannot have been put to bona fide use.
Respondent registered and is using the Domain Name in bad faith having registered the Domain Name with actual knowledge of the Complainant’s rights and having continuously passively held the Domain Name.
Respondent also owns several additional domain names incorporating well known trade marks in the shipping, optics, financial, cement and stone industries including fedex.top, junstone.top, standardcharteredbank.top, and shanxiblack.top which it has also been passively holding evidencing a pattern of bad faith domain name registration and use.
The Complainant received no response to cease and desist letters sent to the Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”).
Pursuant to UDRP Rule 11 (a) the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. As such, after considering the circumstance of the present case the Panel decides that the Proceedings should be in English.
The Domain Name consists of the Complainant's trade mark CITIBANK and the gTLD .top. As such it is identical to the Complainant's CITIBANK registered mark (which is registered, inter alia in China where the Respondent is based, for the Complainant’s services). gTLDs such as .com are generally not taken into account for a determination under this limb of the Policy due to their neutral quality. See Europcar Int'l SA v. New Media Research in Romania SRL, FA 123906 (Forum Nov. 4, 2002)(Because top level domains are required of domain name registrations their addition has been determined to be inconsequential when conducting an identical analysis under Policy 4(a)(i).).
Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
The Respondent received notice of the Complainant's rights during the registration process of the Domain Name. It is well established under the Policy that registrants cannot register domain names identical to famous trade marks in the full knowledge of the reputation of those marks and passively hold them for their own purposes. See Twentieth Century Fox Film Corp v. Risser, FA 93761 (Forum May 18, 2000) (The requirement to show bad faith under the Policy does not require that positive action be shown on the part of the Respondent. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.). The Panel agrees with the Complainant that the evidence shows that, in fact, the page attached to the Domain Name was in reality little more than a page at which the Domain Name was parked and the Respondent knew that the Domain Name equated to a mark in which the Complainant had rights demonstrating that the Respondent registered and used the Domain Name in bad faith. The Respondent also appears to have registered other domain names containing a variety of famous marks of third parties evidencing a pattern of such registrations under Policy 4(b)(ii). As such the Panel holds that the Domain Name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citibank.top> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 22, 2016
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