Citgo Petroleum Corporation v. Rafa Colombia
Claim Number: FA1608001689065
Complainant is Citgo Petroleum Corporation (“Complainant”), represented by Zachary A.P. Oubre of McAfee & Taft A Professional Corporation, Oklahoma, USA. Respondent is Rafa Colombia (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citgoaruba.com>, 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 August 12, 2016; the Forum received payment on August 12, 2016.
On August 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citgoaruba.com> 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 August 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@citgoaruba.com. Also on August 15, 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 September 12, 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. 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
1. Respondent’s <citgoaruba.com> domain name is confusingly similar to Complainant’s CITGO mark.
2. Respondent does not have any rights or legitimate interests in the <citgoaruba.com> domain name.
3. Respondent registered and uses the <citgoaruba.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citgo Petroleum Corporation, is a refiner and marketer of petroleum products. Complainant holds a registration for its CITGO mark with the United States and Patent and Trademark Office (“USPTO”) (Reg. No. 811,940, registered Aug. 2, 1966).
Respondent registered the <citgoaruba.com> domain name on November 13, 2015, and uses it to pass itself off as Complainant and to acquire personal information from Internet users.
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.”).
Complainant claims to have rights in the CITGO mark based on its registration with the USPTO. The Panel finds that registration of a mark with the USPTO is sufficient to establish the registrant’s rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <citgoaruba.com> domain name includes the CITGO mark and adds the generic top-level domain (“gTLD”) “.com,” and the geographic term “aruba.” Panels routinely find that adding the gTLD “.com” to a mark is not relevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Panels have also found that adding a geographic term to a mark in a domain does not distinguish a domain from the mark to which the term is attached. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). Thus, the Panel finds that the <citgoaruba.com> domain name is confusingly similar to Complainant’s CITGO 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 is not commonly known by the disputed domain as shown through WHOIS information identifying Respondent as “Rafa Colombia.” Panels have held that a respondent is not commonly known by a disputed domain based on WHOIS information and a lack of information to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent has not used the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain currently resolves to a blank website. Panels have held that failing to make an active use of a disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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 finds that Respondent’s inactive use of the disputed domain does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant also claims that Respondent previously used the disputed domain name to resolve to a website that solicits Internet users for jobs and requests personal information, while passing itself off as Complainant. Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). The Panel therefore finds that Respondent’s previous use of the disputed domain name is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Screenshots of the disputed domain name and an affidavit from a representative of Complainant demonstrate that Respondent previously used the <citgoaruba.com> domain name to host job postings and request personal information. Panels have found bad faith where a respondent used a disputed domain name comprised of another’s mark to solicit personal information from Internet users. See Citigroup Inc. v. Domain MANAGER / Domain Brokers, FA1505001621817 (Forum July 13, 2015) (finding that the respondent’s use of a survey, in which Internet users were encouraged to enter personal information to complete, indicated bad faith registration and use pursuant to Policy ¶ 4(a)(iii)). Thus, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Respondent’s current use of the disputed domain, to resolve to a blank website, also shows bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel finds that Respondent’s inactive use is further evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant also contends that, in light of the fame and notoriety of Complainant's CITGO mark and the goodwill created in the mark through fifty years of use, it is inconceivable that Respondent could have registered the <citgoaruba.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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 <citgoaruba.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 16, 2016
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