Citigroup Inc. v. Brenda Faile
Claim Number: FA1606001680854
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Brenda Faile (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citigroup.land>, registered with GoDaddy.com, 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 June 23, 2016; the Forum received payment on June 23, 2016.
On June 23, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citigroup.land> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 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@citigroup.land. 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.
A timely Response was received and determined to be complete on July 18, 2016.
On July 22, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <citigroup.land> domain name is confusingly similar to Complainant’s CITIGROUP mark.
2. Respondent does not have any rights or legitimate interests in the <citigroup.land> domain name.
3. Respondent registered and uses the <citigroup.land> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a United States corporation engaged in the business of banking and financial services. Complainant holds a registration for the CITIGROUP mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,406,753, registered Nov. 21, 2000).
Respondent registered the <citigroup.land> domain name on February 20, 2014, but it is not associated with any content.
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.
The Panel finds that Complainant has rights in the CITIGROUP mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Respondent’s <citigroup.land> domain name is identical or confusingly similar as it uses the CITIGROUP mark in its entirety and only adds the TLD “.LAND.” The mere addition of the “.LAND” TLD is inconsequential in a Policy ¶ 4(a)(i) analysis. See Citigroup Inc. v. jose vicente gomar llacer / Gandiyork, SL - B98466980, FA 1652712 (Forum Jan. 25, 2016) (finding <citi.land> confusingly similar to the CITI mark). Thus, the Panel finds that Respondent’s <citigroup.land> domain name is confusingly similar to Complainant’s CITIGROUP 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 no rights or legitimate interests in the disputed domain name, and is not commonly known by the disputed domain name or any variant of Complainant’s mark. Complainant states that Respondent is not licensed or authorized to use Complainant’s CITIGROUP mark. The WHOIS lists “Brenda Faile” as the registrant of record. Thus, the Panel finds that Respondent is not commonly known by <citigroup.land> per Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant also argues that Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Respondent has never associated the disputed domain with any content; the resolving website merely states “Website Coming Soon!.” Failure to make an active use does not indicate any rights or legitimate interests. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel similarly finds that Respondent’s non-use of the disputed domain name using Complainant’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has an established pattern of bad faith domain registrations, and provides a screenshot of Respondent’s alleged domain portfolio, which includes registrations using the trademarks of third parties. However, the Panel notes no adverse UDRP rulings as of yet, and therefore declines to find bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of the CITIGROUP mark due to the global fame of Complainant’s mark. The Panel agrees and finds that Respondent had actual knowledge and registered the <citigroup.land> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Respondent’s inactive holding of the disputed domain name for over two years also indicates bad faith under Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
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 <citigroup.land> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 26, 2016
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