Citadel LLC and its related entity KCG IP Holdings LLC v. Greg Trombley
Claim Number: FA1609001692109
Complainant is Citadel LLC and its related entity KCG IP Holdings LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Greg Trombley (“Respondent”), South Dakota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelgif.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 1, 2016; the Forum received payment on September 2, 2016.
On September 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citadelgif.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 September 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@citadelgif.com. Also on September 7, 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 October 14, 2016.
A timely Additional Submission from Complainant was received and determined to be complete on October 20, 2016.
On October 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it was founded in 1990 and has since grown to be one of the world’s largest and most sophisticated alternative investment institutions. It employs more than 1,250 professionals who are located in offices worldwide and it manages over $25 billion in assets. Its investors include endowments, pension funds, foundations and other institutional investors, as well as high net worth individuals. It is also a leading market maker, providing liquidity and trade execution to retail and institutional clients, and it is a leader in investment management technology. Complainant has rights in the CITADEL mark through its registration in the United States in 2007.
According to Complainant, the disputed domain name is confusingly similar to the CITADEL mark because it contains the mark along with the generic or descriptive term “gif” and the generic top-level domain (‘gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent is not commonly known by the disputed domain name as its name is “Greg Trombley” and it has not been granted permission to use the CITADEL mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website purports to offer financial and investment related services in competition with Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has demonstrated a pattern of bad faith registration and use of domain names through a prior UDRP decision rendered against it through Respondent’s association with or alias of “Arnaldo Mourino.” Respondent uses the disputed domain name in bad faith because the resolving website purports to offer financial and investment related services in competition with Complainant. Respondent registered the disputed domain name in bad faith because it did so with knowledge of Complainant and its CITADEL mark, which can be inferred from its inclusion in the domain name purported to be used within the financial services industry, and because the domain was registered after Respondent was made party to or associated with a party to a prior UDRP case related to Complainant’s rights in the CITADEL mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent alleges that the disputed domain name is not confusingly similar to the CITADEL mark because it does not use it within the financial services industry.
Further, says Respondent, the term “citadel” is generic, so Complainant cannot hold a monopoly over its use. Respondent has rights in the disputed domain name because the domain name is composed of generic terms corresponding to its business name and because Respondent’s business operations are distinct from and not competitive with those of Complainant.
Respondent states that it has engaged in neither bad faith registration nor bad faith use of the disputed domain name.
C. Additional Submissions
Complainant
In its Additional Submission, Complainant alleges that its registration of the CITADEL mark precludes arguments regarding the generic nature of the mark. Complainant does not need to hold exclusive rights in a particular term to have grounds to bring a claim under the Policy. The CITADEL mark and the disputed domain name are what must be compared regarding confusing similarity, not the content or use of the resolving website.
Further, says Complainant, Respondent’s offered services do not need to be confusingly similar to those offered by Complainant for Respondent to be a competitor of Complainant. If Respondent is not competing with Complainant, it is still using the CITADEL mark in a domain name in order to create confusion for financial gain. Respondent’s altered use of the disputed domain name to redirect to the <citadelglobalfund.com> domain name provides further evidence of a pattern of bad faith on Respondent’s part.
Preliminary Issue: Multiple Complainants
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Citadel LLC and KCG IP Holdings LLC. Complainants argue that while KCG IP Holdings LLC is the owner of the claimed CITADEL mark, use of the mark is licensed to Citadel LLC.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.
Complainant owns the mark CITADEL and uses it to market financial and investment services.
Complainant’s registration of its mark dates back to 2007.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent is using the disputed domain name to point to a website that offers services related to those of Complainant.
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 disputed domain name is confusingly similar to the CITADEL mark because it contains the mark along with the generic or descriptive term “gif” and the gTLD “.com.” The term “gif” is generic, and in this context it is an abbreviation for the terms global, infrastructure, and funds, each of which would be descriptive of Complainant’s use of the CITADEL mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Respondent argues that it is the content of the resolving website rather than the domain name itself which must be evaluated for confusingly similarity. Specifically, Respondent proposes that the Panel should compare logos, color schemes, corporate charter organization codes, social media sites, etc. to Complainant’s mark rather than comparing the disputed domain name to Complainant’s mark. However, it is well settled that the confusion analysis in UDRP complaints resides with the comparison of the asserted mark(s) to the domain name in dispute. See Diamond Consortium, LLC d/b/a Diamond Doctor v Brian Cummins, FA1605001675435 (Forum June 24, 2016) (“The consensus view of UDRP panelists is that the “test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion.” In other words, website content (or, for that matter, actual use by the parties) is largely irrelevant in the assessment of confusing similarity for the purposes of paragraph 4(a)(i) of the Policy.”) (internal citation omitted).
While Respondent contends that the disputed domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Consequently, the Panel finds that the disputed domain name is confusingly similar, in the sense of the Policy, to Complainant’s mark.
Respondent is not commonly known by the disputed domain name as its name is “Greg Trombley” and it has not been granted permission to use the CITADEL mark. As such, in the absence of contrary evidence, the Panel finds that Respondent is not so commonly known. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Respondent fails to use the disputed domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website purports to offer financial and investment related services in competition with Complainant. Complainant has provided screenshots of its own websites, and screenshots of the resolving website, to demonstrate this use.
Respondent argues that Complainant provides financial advisory services, investment management services, and financial trading tools services to and for its investor “clients”; whereas Respondent’s investors are not clients but are stakeholders and owners of the fund. The funds that Respondent invests in businesses and infrastructure projects, and other investments are its own funds, not someone else’s. Whereas Complainant provides financial advisory services to and for its clients, Respondent receives advisory services from its various Councils relative to its investments in businesses and infrastructure projects within emerging markets.
In the Panel’s opinion, Respondent has thus confirmed that it is active in the area of financing and investment. Consequently, the Panel finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant maintains that its registration of the CITADEL mark preclude arguments regarding the generic nature of the mark as related to financial services and urges that it does not need to hold exclusive rights in a particular term to have grounds to bring a claim under the Policy. Further, Complainant argues that, while the word “citadel” is arguably generic when used for a “fortress in a commanding position in or near a city,” it is not generic when used to describe financial services such as those provided by Complainant and covered by Complainant’s marks, because “citadel” is not the common name for financial services. The Panel agrees and finds that Respondent’s arguments regarding the generic nature of the terms of the mark affect neither Complainant’s rights nor Complainant’s standing, and do not automatically grant Respondent rights in the disputed domain name. See Napoleon Hill Found. v. VivaCorp SA, FA 672115 (Forum May 19, 2006) (“In response to the generic nature of Complainant’s mark, as a trademark that has been registered on the Principal Register of the USPTO for more than five years [and] is considered incontestable under U.S. trademark law, the Panel finds that deferring to the USPTO’s determination on issuing a valid trademark registration to Complainant is the right way to assert its validity and distinctive character.”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate 'exclusive rights,' but only that the complainant has a bona fide basis for making the complaint in the first place).
Respondent registered the disputed domain name in bad faith because it did so with knowledge of Complainant and its CITADEL mark, which can be inferred from its inclusion in the domain name purported to be used within the financial services industry, and because the domain was registered after Respondent was made party to or associated with a party to a prior UDRP case related to Complainant’s rights in the CITADEL mark. Respondent’s association with the case Citadel LLC and its related entity KCG IP Holdings LLC v. Arnaldo Mourino / Squarespace, FA1605001674876 (FORUM June 28, 2016) is sufficient to demonstrate actual knowledge on Respondent’s part. Consequently, the Panel finds that Respondent registered the disputed domain name in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant asserts that Respondent has demonstrated a pattern of bad faith registration and use of domain names through a prior UDRP decision rendered against it through Respondent’s association with or alias of “Arnaldo Mourino.” Complainant refers to Citadel LLC and its related entity KCG IP Holdings LLC v. Arnaldo Mourino / Squarespace, FA1605001674876 (FORUM June 28, 2016), in which Complainant claims that Respondent represented the respondent. Further, Complainant alleges that during pendency of this proceeding, Respondent altered the use of the disputed domain name to redirect to the <citadelglobalfund.com> domain name, and that this is further evidence of a connection between Respondent and “Arnaldo Mourino.” Complainant has provided evidence of this redirected use. The Panel finds this evidence sufficient, and thus it finds that Respondent has displayed a pattern of bad faith registration and use of domain names according to policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum November 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Respondent uses the disputed domain name in bad faith because the resolving website purports to offer financial and investment related services in competition with Complainant. As Complainant correctly notes, Respondent’s offered services do not need to be confusingly similar to those offered by Complainant for Respondent to be a competitor of Complainant. Consequently the Panel finds that Respondent uses the disputed domain name in bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Bondi Icebergs Inc. d/b/a Bondi Bathers v. Kerry Morrison / MORDAW, FA1505001618395 (FORUM June 9, 2015) (finding that the respondent was a direct competitor of the complainant on the basis that they sold substantially similar products in the same market).
Further, even if Respondent did not compete with Complainant, its use of the disputed domain name would still be in bad faith under Policy ¶ 4(b)(iv), because it is using the CITADEL mark in a domain name in order to create confusion for financial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Speedo Holdings B.V. v. Tyrone L Glenn-Bus, D2003-0440 (WIPO July 30, 2003).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citadelgif.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 27, 2016
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