Citadel LLC and its related entity KCG IP Holdings LLC v. Arnaldo Mourino / Squarespace
Claim Number: FA1605001674876
Complainant is Citadel LLC and its related entity KCG IP Holdings LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is Arnaldo Mourino / Squarespace (“Respondent”), represented by Greg Trombley of GLOBAL INFRASTRUCTURE INVESTMENT STRATEGIC COUNCIL (GIISC) CORP., District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelglobalfunds.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2016; the Forum received payment on May 16, 2016.
On May 13, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <citadelglobalfunds.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 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@citadelglobalfunds.com. 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.
A timely Response was received and determined to be complete on June 6, 2016.
Complainant’s Additional Submission was timely received on June 10, 2016, and determined to be compliant under Forum’s Supplemental Rule 7.
On June 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant was founded in 1990 as an alternative investment institution. Complainant offers financial services pertaining to endowments, pension funds, foundations and other institutional investors, as well as high net worth individuals and is a leading market maker, providing liquidity and trade execution to retail and institutional clients. Complainant owns the CITADEL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,213,943, registered Feb. 27, 2007). Respondent’s <citadelglobalfunds.com> is confusingly similar to Complainant’s CITADEL mark. The disputed domain name incorporates Complainant’s mark while adding the words “global” and “funds” which are descriptive of Complainant’s business and adds the generic top level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and has not been licensed to make use of the CITADEL mark in any manner. Further, Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The <citadelglobalfunds.com> domain name resolves to an unfinished website purporting to offer financial and investment related services that compete directly with those offered by Complainant.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s use of the <citadelglobalfunds.com> domain name to offer services that directly compete with Complainant disrupts Complainant’s business. Respondent registered the disputed domain name with actual or constructive knowledge of Complainants rights in the CITADEL mark.
B. Respondent
Respondent makes no contentions with regards to Policy ¶ 4(a)(i). Respondent does contend that it is not offering services that compete with Complainant.
Respondent did not register and is not using the <citadelglobalfunds.com> domain name in bad faith. Respondent and Complainant operate in different business areas.
C. Additional Submission - Complainant
The letter in response to the Complaint was not submitted by Respondent, but rather by the representative of a third-party identified as Global Infrastructure Investment Strategic Counsel, Inc. The WHOIS information for the disputed domain name lists “Arnaldo Mourino” as the registrant of record, not Global Infrastructure Investment Strategic Counsel, Inc. (“GIISC”), who sent the Response. The Response is, therefore, invalid.
If the Panel holds that GIISC is authorized to represent “Arnaldo Mourino,” the response is not supplemented by any evidence to support Respondent’s claims or rebut those made by Complainant.
Complainant is Citadel LLC and its related entity KCG IP Holdings LLC, of Chicago, IL, USA. Complainant is the owner of domestic registrations for the mark CITADEL which it has continuously used since at least as early as 1994 in connection with its provision of financial services such as investment management, consultation, advice brokerage services, and investments of funds for others.
Respondent is Arnaldo Mourino / Squarespace of New York, NY, USA. Respondent’s registrar’s address is listed as Toronto, ON, Canada. Respondent also claims to provide financial advisory and investment services although at points in its response Respondent claims that it “…acts in an ownership capacity and not in an “advisory” fiduciary capacity like Citadel, LLC.”. In other places it states that it is the investor of its own funds as opposed to investing funds of others like Complainant. The Panel notes the <citadelglobalfunds.com> domain name was registered on or about July 6, 2014.
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 was founded in 1990 as an alternative investment institution. Complainant offers financial services pertaining to endowments, pension funds, foundations and other institutional investors, as well as high net worth individuals and is a market maker, providing liquidity and trade execution to retail and institutional clients. Complainant owns the CITADEL mark through its registration with the USPTO (e.g., Reg. No. 3,213,943, registered Feb. 27, 2007). Registration with the USPTO establishes a complainant’s rights under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).). The Panel here finds that Complainant has satisfied its Policy ¶ 4(a)(i) burden in establishing rights in the CITADEL mark.
Complainant asserts Respondent’s <citadelglobalfunds.com> is confusingly similar to Complainant’s CITADEL mark. The disputed domain name incorporates Complainant’s mark while adding the words “global” and “fund,” which are descriptive of Complainant’s business, and adds the gTLD “.com.” The addition of terms that describe a Complainant’s business and the “.com” gTLD has been held inadequate to differentiate a disputed domain name from a Complainant’s mark. See ForumAllianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i). The Panel here finds that Complainant has established its rights under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant argues 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 the CITADEL mark. Further, Complainant asserts that Respondent has no license or authorization to use the CITADEL mark. The Panel notes that the WHOIS information lists “Arnaldo Mourino / Squarespace” as registrant of record. Complainant contends that “Squarespace” is a popular website building online platform and that Respondent’s listed address is not the same as those listed for “Squarespace.” As Respondent has submitted nothing to contradict Complainant’s assertions, the Panel finds no basis in the available record to conclude that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (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. Specifically, Complainant argues that Respondent uses its disputed domain name to offer financial products that directly compete with Complainant’s business. Complainant has provided screen shots of Respondent’s website in support of its argument. Respondent alleges, without providing evidence, that it is not offering financial services that compete with those offered by Complainant.
Past panels have held that there 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) where a respondent uses a disputed domain name to offer services that compete with those offered by Complainant. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). The Panel here finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant has proven this element.
Complainant asserts that Respondent has registered and used the disputed domain name in bad faith. Complainant alleges that Respondent uses its disputed domain name to compete with and disrupt Complainant’s business, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iii). Complainant argues that Respondent sells products that are in direct competition with Complainant’s business. Complainant has provided screenshots of Respondent’s resolving website reached via the <citadelglobalfunds.com> domain name illustrating Respondent’s sale of financial products and services similar to those of Complainant. Previous panels have found evidence of bad faith registration and use under Policy ¶ 4(b)(iii) where a respondent uses a disputed domain name to sell products that are in direct competition with the complainant’s business. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <citadelglobalfunds.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 28, 2016
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