Citigroup Inc. v. Li Dong
Claim Number: FA1606001680902
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Li Dong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citibank.black> and <citibank.pink>, registered with West263 International Limited; and <citibank.ink>, <citibank.lol>, and <citibank.sale>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2016; the Forum received payment on June 23, 2016.
On June 26, 2016, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <citibank.ink>, <citibank.lol>, and <citibank.sale> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. 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 June 26, 2016, West263 International Limited confirmed by e-mail to the Forum that the <citibank.black> and <citibank.pink> domain names are registered with West263 International Limited and that Respondent is the current registrant of the names. West263 International Limited has verified that Respondent is bound by the West263 International Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On June 28, 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@citibank.black, postmaster@citibank.ink, postmaster@citibank.lol, postmaster@citibank.pink, and postmaster@citibank.sale. Also on June 28, 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 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Panel notes that the Registration Agreements are in the Chinese language and so, ordinarily, the language of these administrative proceedings (and the decision) would be in Chinese. Nevertheless, Complainant makes the request pursuant to UDRP Rule 11 that these administrative proceedings proceed in the English language for the following reasons:
(i) Respondent has targeted an English-language trademark which is reflected in the Disputed Domain Names; (ii) Respondent has targeted various English-language TLDs rendered in ASCII characters as reflected in the Disputed Domain Names; (iii) the Disputed Domain Names resolve to websites containing text in both Chinese and English offering the Disputed Domain Names for sale or rent, as evidenced in the attached supporting exhibits; and (iv) Respondent replied to Complainant’s cease and desist letters in English…
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties.[i] In addition to the submissions made by Complainant, the Panel finds that the trademark CITIBANK might be considered to be an “English language” mark in the sense that it has little meaning in another language. The Panel finds that its use indicates a Respondent with an understanding of the English language. Coupled with the other evidence, the Panel finds enough evidence to suggest the likelihood that Respondent is proficient in the English language and so, pursuant to UDRP Rule 11(a), the Panel decides that the proceeding should be in English.
Albeit that there is only one named Respondent and one Holder of the disputed domain names, the Panel notes from the publicly available WhoIs data that there are five different addresses given for the five domain names. Although it is therefore conceivable that there might be more than one legal person involved, it is Complainant’s submission that all five domain names belong to the same individual, namely Li Dong, given that the name, phone number, fax number, and email address given in the WhoIs data in connection with all five domain names is identical. Further, it is submitted by Complainant that all five names have been registered through two Affiliated Registrars and, furthermore, all five names resolve to websites with identical content, sponsored by the same Affiliated Registrars.[ii]
The Panel accepts on this evidence that it is more likely than not that a single registrant lies behind all five domain name and therefore allows these proceedings to continue against Respondent.
A. Complainant
Complainant asserts trademark rights in CITIBANK and alleges that the disputed domain names are identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered the disputed domain names in bad faith in light of the notoriety of Complainant's trademark. Further, that the domain names have either been used in bad faith or, in those cases where there has been no use, it is inconceivable that Respondent could have a good faith intention for use of the name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant owns the trademark CITIBANK, the subject, inter alia,[iii] of United States Trademark Reg. 691,815, registered January 19, 1960;
2. The disputed domain name CITIBANK.INK was registered on December 22, 2015 and the name CITIBANK.SALE was registered on December 23, 2015;
3. On February 29, 2016, Complainant’s representative sent cease and desist correspondence to Respondent in response to which Respondent asked for USD250,000 in exchange for the two domain names listed above;
4. The disputed domain names CITIBANK.BLACK, CITIBANK.LOL, and CITIBANK.PINK were then registered on March 6, 2016;
5. All of the disputed domain names resolve or have previously resolved to parked pages advertising the names for sale or rent, and carry advertisements for various third party goods and services, some of which compete with Complainant’s business under the trademark; and
6. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant therefore has rights since it provides proof of its trademark registration with a Federal authority. Further, each of the disputed domain names differs from the trademark only by addition of one or other domain name extension. Panel therefore finds the domain names to be legally identical to Complainant’s trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.[iv]
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[v]
The publicly available WhoIs information does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain names. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark. Further, the evidence is that the disputed domain names resolve to parked pages with banner advertising. Finally, the Respondent offered to sell the domain names, both generally to the public via those parking pages and, in the case of two domain names, directly to Complainant for an excessive amount of money.
Panel finds that Complainant has established a prima facie case[vi] and accordingly the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, the prima facie case against Respondent is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent targeted Complainant and its trademark. Panel finds registration in bad faith of all five domain names. To the extent that it might be said that the parking pages do not demonstrate use at all of the domain names, then given the evidence of notoriety of the trademark there can be no possible good faith use in future and so Panel finds bad faith use in accordance with the principles first set out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. To the extent that the parking pages are said to be use of the domain names in connection with third party advertisers, then the Panel accepts Complainant’s claim that Respondent benefits commercially from that arrangement and so finds bad faith use and registration in each case pursuant to paragraph 4(b)(iv) above. Were it necessary to go on and do so, the Panel would also find in each case bad faith use and registration pursuant to paragraph 4(b)(i) above.
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.black>, <citibank.ink>, <citibank.lol>, <citibank.pink>, and <citibank.sale> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 31, 2016
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”.
[ii] See, for example, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, et al. WIPO Case No. D2010-0281 (May 18, 2010) explaining that “decisions have been rendered against multiple respondents in single proceedings based on the presence of a common administrative or technical contact, or other instances of commonality in the registration information, such as the same postal address or email address,” as well as “where the content of their websites was substantially identical and referred Internet visitors to a common ‘homepage’”); see also, BackstreetProductions, Inc. v. John Zuccarini et al., WIPO Case No. D2001-0654 (Aug. 24, 2001) consolidating multiple domain names under paragraph 10(e) where technically different registrants treated as alter egos; ISL Marketing AG et al. v. J.Y. Chung, et al., WIPO Case No. D2000-0034 (Apr. 3, 2000) proceeding against multiple respondents with common administrative contact; Caesars World, Inc. v. Starnet Communications et al., WIPO Case No.
D2002-0066 (Apr. 19, 2002); Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 (Mar. 22, 2000); Harman License Holdings, Limited v. Dustin Dorrance et al., WIPO Case No. D2004-0659 (Oct. 29, 2004) consolidating multiple respondents and multiple domain names ruled appropriate where domain names were registered with same registrar and resolved to essentially identical websites.
[iii] Notably, China Reg. No. 11377293 (and others) for the word mark CITIBANK, albeit that under the Policy there is no requirement for a complainant to own a national registration in the seat of the respondent.
[iv] See, for example, SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008); Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007); State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006); Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003).
[v] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000.
[vi] See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question; George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name; Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
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