Citigroup Inc. v. Sandra Stark
Claim Number: FA1606001680833
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, Washington D.C., United States. Respondent is Sandra Stark (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.menu>, registered with eNom, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically June 23, 2016; the Forum received payment June 23, 2016.
On June 24, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <citi.menu> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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.menu. Also on June 27, 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 July 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant is an American multinational banking and financial services corporation headquartered in New York, NY. As of 2014, Complainant was the fourteenth largest bank holding company in the world by assets and the seventh largest by market capitalization. Complainant registered the CITI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,181,467, registered Dec. 8, 1981), which establishes Complainant’s rights in its mark. The <citi.menu> domain name is identical to Complainant’s mark as it wholly incorporates the CITI mark and merely adds the generic top-level domain (“gTLD”) “.menu.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name and is not making a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name resolves to a parked page.
Respondent registered and is using the disputed domain name in bad faith. Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Finally, because of the global fame of Complainant’s mark, it is clear that Respondent registered the domain with actual knowledge of Complainant’s rights in its protected CITI mark.
Respondent’s Responsive Allegations in this Proceeding:
Respondent did not submit a formal response for consideration in this matter. The Panel notes that Respondent registered the <citi.menu> domain name July 31, 2014.
Complainant established its rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or domain name.
Respondent knowingly registered and used a domain name that is confusingly similar to Complainant’s protected and mark.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant is an American multinational banking and financial services corporation headquartered in New York, NY. As of 2014, Complainant was the fourteenth largest bank holding company in the world by assets and the seventh largest by market capitalization. Complainant registered its CITI mark with the USPTO (e.g., Reg. No. 1,181,467, registered Dec. 8, 1981). Complainant’s USPTO registration establishes its rights in its mark. See Compl., at Ex. D. The Panel finds that, although Respondent resides and/or operates in Canada, registrations with the USPTO establish a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). 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). Therefore, the Panel finds that Complainant proved its rights in the CITI mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <citi.menu> domain name is identical to Complainant’s mark as it wholly incorporates the CITI mark and merely adds the gTLD “.menu.” Adding 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). Therefore, this Panel finds that Respondent registered and used a disputed domain name that is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent Registered and used the disputed domain name
that is confusingly similar to Complainant’s protected mark; Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 “Sandy Stark” as registrant of record. Respondent failed to rebut Complainant’s contentions concerning Policy ¶ 4(c)(ii). Thus, the Panel has no basis in the available record to find Respondent commonly known by the <citi.menu> 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).
Further, Complainant asserts that Respondent lacks rights or legitimate interests in the <citi.menu> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or use it for a legitimate noncommercial or fair purpose. Complainant submits Exhibit J, showing Respondent’s disputed domain name, featuring competing hyperlinks on its resolving website, which diverts Internet users who are seeking Complainant’s website to third-party websites. The Panel notes that some of the featured hyperlinks include “Rent Textbooks & Save 90%” and “Shop Digital Textbooks.” Prior panels have found that a respondent’s use of competing hyperlinks is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). This Panel finds that Respondent’s use of competing hyperlinks is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel also agrees that as Respondent here presumably attempts to profit through click-through fees, there can logically be no noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent presumably receives referral fees through the use of its disputed domain name, and registered the disputed domain name to attract and mislead consumers for its own commercial gain. Hyperlinks are typically associated with “click-through” fees, and a respondent’s use of them is viewed as evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). This Panel finds that Respondent acted in bad faith under Policy ¶ 4(b)(iv) in registering and using a domain name that contains Complainant’s protected mark.
Because of the global fame of Complainant’s mark, Complainant argues that it is clear that Respondent registered the domain with actual knowledge of the CITI mark. Past panels have held that a respondent demonstrates bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent is aware of the complainant’s well-known mark at the time the disputed domain name is registered. Complainant asserts that its CITI mark is so well established and so well known that no colorable argument should be heard that Respondent was not aware of Complainant’s rights in it’s protected mark. It is Complainant’s position that the level of notoriety surrounding the mark put Respondent on notice as to Complainant’s rights in the mark. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). This Panel agrees based on the well-known mark but also based on the way the mark is used and finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in its mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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.menu> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 8, 2016.
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