Citigroup Inc. v. Administrator Dom / Muscari Holding Limited
Claim Number: FA1606001680870
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, Washington, D.C., United States. Respondent is Administrator Dom / Muscari Holding Limited (“Respondent”), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citibankonlien.com>, registered with EuroDNS S.A.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2016; the Forum received payment on June 23, 2016.
On June 28, 2016, EuroDNS S.A. confirmed by e-mail to the Forum that the <citibankonlien.com> domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name. EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. 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 July 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@citibankonlien.com. Also on July 5, 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 August 2,2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 an American multinational banking services corporation headquartered in New York, New York. Complainant has registered the CITIBANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 691,815, registered Jan. 19, 1960), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Ex. D. The <citibankonlien.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark and merely adds the term “onlien,” a common misspelling of the generic word “online,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the terms of the disputed domain name, and Respondent is not authorized by Complainant to use the CITIBANK mark in any manner. Further, 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. Rather, Respondent’s disputed domain name resolves to a webpage that hosts links to products and services that are directly competitive with Complainant’s business. See Compl., at Attached Ex. J.
Respondent registered and is using the disputed domain name in bad faith. First, Respondent has offered the disputed domain name for sale. Second, Respondent uses the disputed domain name to host competing hyperlinks, in violation of Policy ¶ 4(b)(iv). Third, Respondent failed to respond to Complainant’s cease and desist letters. Finally, based on the fame of Complainant’s CITIBANK mark, it is clear that Respondent registered the domain with actual knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on March 16, 2009.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s valid and subsisting trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent engaged in bad faith use and registration of the disputed domain name.
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.”).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s valid, subsisting, and famous registered trademark. The complainant has adequately pled its interests in and to the trademark CITIBANK. The disputed domain name is arrived at by merely misspelling “online” to “onlein” and adding the gTLD “.com”. This fails to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark.
Further, the Respondent has not rights or legitimate interests in or to the disputed domain name. The Respondent has been granted no permission or license to register the disputed domain name. The Respondent is not commonly known by the disputed domain name. The WHOIS information merely lists “Administrator Dom / Muscari Holding Limited” as registrant. The Respondent has failed to provide any evidence for the Panel’s consideration. The Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Respondent apparently is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant alleges that Respondent’s domain resolves to a webpage that hosts links to products and/or services that are directly competitive with Complainant’s business. See Compl., at Attached Ex. J. Respondent’s use of a domain to host competing hyperlinks constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
As such, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent has apparently offered the domain for sale. Specifically, Complainant argues that the disputed domain resolves to various websites, including sites that contain prominent banners advertising the disputed domain for sale. See Compl., at Attached Ex. J. Panels have concluded that a respondent’s attempted sale of a domain constitutes bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent registered and is using the domain in bad faith per Policy ¶ 4(b)(i).
Respondent is also apparently using the disputed domain name to host competing hyperlinks, in violation of Policy ¶ 4(b)(iv). Panels have consistently held that a respondent’s use of a domain to host competing hyperlinks is evidence of bad faith under 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). As such, the Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(b)(iv).
Complainant further alleges that Respondent failed to respond to Complainant’s cease and desist letters. See Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, D2010-1589 (WIPO Nov. 3, 2010) (“The Panel also considers the failure of the Respondent to respond to the Complainant’s letters of demand and failure to file a Response to the Complaint further support an inference of bad faith.”). Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use.
Finally, Complainant argues that based on the fame of Complainant’s CITIBANK mark, it is clear that Respondent registered the domain with actual knowledge of Complainant’s mark and rights therein. See Compl., at Attached Ex. G. 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. 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).
Accordingly, the Panel finds that Respondent registered the disputed domain with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
As such, the Panel concludes that the Respondent registered and is using the disputed domain name 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 <citibankonlien.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: August 4, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page