Citadel LLC and its related entity KCG IP Holdings LLC v. Brian Johnson
Claim Number: FA1704001725322
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 Brian Johnson (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelgi.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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2017; the Forum received payment on April 6, 2017.
On April 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citadelgi.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 April 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 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@citadelgi.com. Also on April 10, 2017, 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 April 28, 2017.
On May 3rd, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus 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.
Further to a Panel Order, Additional Submissions were received on May 4, 2017, May 16, 2017 and May 18, 2017 from Complainant and on May 23, 2017, from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the Disputed Domain Name <citadelgi.com> is confusingly similar to its trademarks CITADEL as the mere addition of the final letters “gi” and the extension <.com> do not prevent any likelihood of confusion.
Complainant further claims that Respondent lacks rights or legitimate interest in the Disputed Domain Name as:
(i) Respondent is not a licensee of Complainant and was never authorized to use the CITADEL trademarks and register the Disputed Domain Name.
(ii) Respondent has never been commonly known under the Disputed Domain Name;
(iii) The passive holding of the Disputed Domain Name does not constitute a bona fide offering of goods and services.
Complainant finally argues that the Disputed Domain Name was registered and is being used in bad faith as:
(i) The Disputed Domain Name incorporates a well-known trademark in the field of financial services, which Complainant had to be aware of;
(ii) As the Disputed Domain Name was registered in bad faith, passive holding of the Disputed Domain Name constitutes a use in bad faith.
B. Respondent
Respondent first claims that the Disputed Domain Name is not confusingly similar to Complainant’s CITADEL trademarks as:
(i) Complainant does not have a physical presence in the Russian Federation where Respondent is established;
(ii) There are many companies using the term “CITADEL” for financial services as shown by an Internet search.
Respondent further claims to have established rights and legitimate interests in the Disputed Domain Name has Respondent has been incorporated in the Russian Federation under the name “Citadel Global Investments” since 2015 and is well-known under said name in the Russian Federation.
Respondent finally contends that they are not using the Disputed Domain Name in bad faith as:
(i) Respondent operates a legitimate business;
(ii) Respondent has no desire to sell, dispose, offer to lease the Disputed Domain Name to a third party;
(iii) Respondent is currently in the process of creating a website in connection with the Disputed Domain Name.
C. Additional Submissions
In its Additional Submissions, Complainant:
(i) Puts forth that, in order to show rights or legitimate interests, concrete evidence of preparation for non-infringing use prior to Respondent’s knowledge of Complainant must be produced;
(ii) Argues that, in addition to being passively held, the Disputed Domain Name is linked to active email servers;
(iii) Contends that, even if Respondent has been incorporated in the Russian Federation under the name “Citadel Global Investments” since 2015, Complainant’s trademark CITADEL predates said incorporation.
In its Additional Submission, Respondent indicates that:
(i) He understands that “there could be some confusion” with Complainant;
(ii) He will change its company name and destroy any document displaying the CITADEL name;
(iii) He wants to retain the Disputed Domain Name during a transition period.
Complainant is Citadel LLC and its related entity KCG IP Holdings LLC. Citadel LLC is an American company founded in 1990, which has grown to become one of the world’s largest alternative investment institutions. It notably provides liquidity and trade execution to retail and institutional clients. Complainant is a licensee of its related American entity KGC IP Holding LLC, who owns several CITADEL trademarks protected around the world, including in the Russian Federation.
Respondent is Brian Johnson, a private individual domiciled in the Russian Federation.
Respondent registered the Disputed Domain Name <citadelgi.com> on October 5, 2015. Based on the evidence provided in the case file, the Disputed Domain Name points towards a website under construction and is also connected to an active email server.
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.
As supported by the evidence in the case file, Complainant has rights in CITADEL trademarks: KGC IP Holdings LLC owns numerous CITADEL trademarks around the world and Citadel LLC is a licensee of KGC IP Holding LLC.
The Disputed Domain name <citadelgi.com> wholly incorporates the trademark CITADEL with the mere addition of the letters "gi". Under a well-established Policy view, a domain name which wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for the purposes of the Policy (See e.g. Oki Data Americas Inc. v. ASD Inc., WIPO case No. D2001-0903).
Furthermore, based on Respondent’s Response, the Panel further finds that the letters « gi » within the Disputed Domain Name stand for « General Investment », which are generic words displaying an obvious link to Complainant's activity, consequently enhancing the likelihood of confusion (See e.g. Bloomberg L.P. v. Baltic Consultants Ltd, FA 95834 (Forum, November 20, 2000). Respondent himself acknowledges in his Additional Submission that the Disputed Domain Name could generate confusion between him and Complainant.
Even in the event that the letters “gi” would not be perceived by internet users as meaning “general investment”, the Disputed Domain Name can still generate a likelihood of confusion as the mere addition of random letters to a well-established trademark does not differentiate a domain name from said trademark (See e.g. Am. Online Inc v. Amigos On Line RJ, FA 115041 (Forum, August 28, 2002).
Finally, for the purposes of the present comparison, the Panel agrees with the common view under the UDRP that generic Top-Level Domain (“gTLD”) extensions may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name (see, e.g., Reese v. Morgan, FA 917029 (Forum, April 5, 2007) and considers the gTLD extension “.com” of the Disputed Domain Name irrelevant.
The Panel therefore finds that the Disputed Domain Name is confusingly similar to the trademarks CITADEL in which Complainant has rights, in accordance with Paragraph 4(a)(i) of the Policy.
The Panel finds that Complainant has never authorized Respondent to use the CITADEL trademarks, nor authorized Respondent to register or use any domain name incorporating this trademark – an allegation which Respondent has not denied. Furthermore, despite his allegations, Respondent never provided any evidence in its Additional Submission that they have been known under the company name “Citadel Global Investment” in the Russian Federation, even less so prior to Complainant’s rights on the CITADEL trademarks in the Russian Federation.
Finally, the Panel is of the opinion that Respondent's failure to ever develop an active website shows lack of a bona fide offering of goods or services (See e.g. State Fair of Texas v. State Fair Guides, FA 95066 (Forum, July 25, 2000 ; MW AG v. Loophole, WIPO case No. D2000-1156, October 26, 2000).
Therefore, the Panel determines that Respondent has no rights or legitimate interests in the domain name in accordance with Paragraph 4(a)(ii) of the Policy.
In his Response, Respondent claims to have been operating in the Russian Federation under the trade name “Citadel Global Investments Russia”, which corresponds to Complainant’s field of activity with respect to the CITADEL trademarks. In addition, Complainant’s official website https://www.citadel.com/ is listed as the first result of a Google search on the name “CITADEL”. The Panel therefore finds more likely than not that Respondent had actual knowledge of the CITADEL trademarks at the time of registration of the Disputed Domain Name and that he intentionally registered the Disputed Domain Name in order to capitalise on the reputation of Complainant’s trademark (See e.g., Siemens AG v. Client, WIPO Case No. D2015-2035, December 18, 2015 ; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, May 8, 2009).
Since the Disputed Domain Name was registered in bad faith, the Panel finally finds that the ever-inactive state of the Disputed Domain name constitutes passive holding and, therefore, use of the Disputed Domain Name in bad faith (See e.g., The Caravan Club v. Mrgsale, FA 0007000095314 (Forum August 30, 2000 ; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000).
Therefore, the Panel finds that the requirements under Paragraph 4(a)(iii) of the Policy are met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citadelgi.com> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: May 30, 2017
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