Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v. Artur Ustinov
Claim Number: FA1806001790208
Complainant is Citadel Enterprise Americas LLC and its related entity, KCG IP Holdings LLC (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Artur Ustinov (“Respondent”), of Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <asicminercitadel.com>, <bitcoincitadelwallet.com>, <btccitadel.com>, <citadelasicminer.com>, <citadelbtc.com>, <citadelcryptocurrency.com>, <citadelminer.com>, <citadelrepublic.com>, <citadelwallet.com>, <cryptocurrencycitadel.com>, <ethereumcitadel.com> and <minercitadel.com>, registered with GoDaddy.com, LLC.
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.
Luca Barbero as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2018; the Forum received payment on June 6, 2018.
On Jun 5, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <asicminercitadel.com>, <bitcoincitadelwallet.com>, <btccitadel.com>, <citadelasicminer.com>, <citadelbtc.com>, <citadelcryptocurrency.com>, <citadelminer.com>, <citadelrepublic.com>, <citadelwallet.com>, <cryptocurrencycitadel.com>, <ethereumcitadel.com>, and <minercitadel.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2018 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@asicminercitadel.com, postmaster@bitcoincitadelwallet.com, postmaster@btccitadel.com, postmaster@citadelasicminer.com, postmaster@citadelbtc.com, postmaster@citadelcryptocurrency.com, postmaster@citadelminer.com, postmaster@citadelrepublic.com, postmaster@citadelwallet.com, postmaster@cryptocurrencycitadel.com, postmaster@ethereumcitadel.com, postmaster@minercitadel.com. Also on June 6, 2018, 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 June 11, 2018.
Complainant filed an Additional Submission on June 18, 2018, which was timely received by the Forum and fulfilled the additional conditions provided by Supplemental Rule 7 (b).
On June 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luca Barbero 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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant points out that it was founded in 1990 and is one of the world’s largest and most sophisticated alternative investment institutions.
Complainant contends that it has rights in the CITADEL mark based on its trademark registrations with the United States Patent and Trademark Office (“USPTO”), namely Registration Nos. 2,812,459 (word and device), registered on February 10, 2004 in International class 36, and 3,213,943 (word mark), registered on February 27, 2007 in International class 36, as highlighted by copies of the trademark registration certificates submitted as Annex 3 to Complainant.
Complainant informs the Panel that it operates online via its official websites at <citadel.com> and <citadelsecurities.com>. Moreover, Complainant, through a related entity, is also the registry operator of the <.citadel> top level domain.
Complainant asserts that, due to the extensive use of the CITADEL marks and the success of Complainant’s business, prior decisions have acknowledged that Complainant’s CITADEL mark has achieved a considerable degree of fame and notoriety, such as Citadel LLC and its related entity, KCG IP Holdings, LLC v. Jones Steven / E-Millions Pty Ltd, FA1402001544104 (Forum Mar. 28, 2014); Citadel Investment Group v. Anthony N.Georgiuo, FA1482483 (Forum Mar. 4, 2013).
Complainant states that the disputed domain names are confusingly similar to Complainant’s CITADEL mark since, in creating each domain name, Respondent added generic terms (“cryptocurrency” and “wallet”), or descriptive terms (“ASIC,” “Bitcoin,” “BTC,” “miner,” “Republic,” “Ethereum” – all alluding to cryptocurrency), and a “.com” generic top-level domain (“gTLD”) to the mark.
Complainant indicates that Respondent has no rights or legitimate interests in the disputed domain names for the following reasons:
i) Respondent is not licensed, permitted, or authorized to use Complainant’s CITADEL mark;
ii) Respondent is not commonly known by the disputed domain names;
iii) Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, as the disputed domain names resolve to a website, available at “www.cryptopaydomains.com”, that purports to offer the disputed domain names for sale.
Complainant also submits that Respondent registered and is using the disputed domain names in bad faith because:
i) Respondent’s registration of domain names incorporating the trademark of a large, well-known financial services company with many trademark registrations in the United States and around the world is alone sufficient to infer bad faith, as Respondent had actual knowledge of Complainant’s rights in the CITADEL mark prior to registering the disputed domain names;
ii) Respondent is attempting to sell the disputed domain names in excess of their out of pocket costs;
iii) Respondent is using the disputed domain names to disrupt Complainant’s business by competing with Complainant and its financial services, specifically by the reselling of the disputed domain names at an inflated price.
B. Respondent
Respondent contends that the term “citadel” incorporated in Complainant’s CITADEL mark is a vernacular, dictionary term.
Respondent also states that its use of the disputed domain names does not intersect with Complainant’s business as Complainant does not engage in cryptocurrency. Respondent further asserts that it does not compete with nor intend to sell the disputed domain names to Complainant and that it is not attempting to attract customers or consumers seeking Complainant’s goods or services.
Respondent adds that it has no intent to harm Complainant and its business as it operates in a separate industry that does not compete with Complainant. Respondent also indicates that it is prepared to remove the references to the disputed domain names on its website “www.cryptopaydomains.com”, to delete the redirection of the disputed domain names to said website and to never sell the disputed domain names.
C. Complainant’s Additional Submission
Complainant states that, upon its review of the Complaint in preparation for the drafting of the Additional Submission, it realized that Annex 5 to the Complaint may not have reached the Forum and, therefore, submits it again as an attachment to its Additional Submission.
Complainant contends that each defense raised by Respondent is flawed and fails to rebut Complainant’s case.
Complainant highlights that the word “citadel” is arguably generic when used for a “fortress in a commanding position in or near a city,” but 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. Indeed, the very fact that Complainant’s marks are registered with the USPTO disproves Respondent’s argument that CITADEL is a generic term.
Complainant contends that Respondent failed to present evidence of rights or legitimate interest in the disputed domain names and to prove that the services offered through the disputed domain names are not confusingly similar to those of Complainant. Complainant alleges that the services offered through the disputed domain names are irrelevant to a confusing similarity analysis and that, in any case, Respondent’s description of cryptocurrency clearly falls into the category of financial services and investment of funds which are both covered by the CITADEL mark. Therefore, Complainant concludes that Respondent registered the disputed domain names in order to interfere with Complainant’s business.
Complainant further states that Respondent fails to offer any evidence that will rebut Complainant’s prima facie case showing that Respondent registered and is using the disputed domain name in bad faith.
Complainant alleges that Respondent contradicts its statement that it did not acquire the disputed domain names to sell them to Complainant or its competitors when it admits that “the domain[s] associated with cryptocurrency for any company is an investment in the future” and that “when buying and registering these domains [we] spent a certain amount of money and a lot of our efforts to find and register, so these domains were offered for sale for a fee to compensate for our costs and lost time.”
Complainant reiterates that Respondent’s primary purpose in the registration of the disputed domain names was either to disrupt the business of a competitor and/or to sell the disputed domain names to Complainant or competitors of Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs. Complainant concludes that, even if Respondent only registered Complainant’s mark in the disputed domain names to create confusion as to the source of its commercial website, that would still be evidence of Respondent’s bad faith.
Complainant is Citadel LLC and its related entity KCG IP Holdings LLC, of Chicago, IL, United States. Complainant is the owner of United States registrations for the mark CITADEL, which it has continuously used since at least as early as 1994 in connection with the provision of financial services such as investment management, consultation, advice brokerage services, and investments of funds for others.
Complainant has provided evidence of ownership of the United States trademark registrations Nos. 2,812,459 for CITADEL (word and device), registered on February 10, 2004, claiming first use in commerce on August 31, 1994, in International class 36; and 3,213,943 for CITADEL (word mark), registered on February 27, 2007 in International class 36.
Complainant operates online via its websites at <citadel.com>, registered on December 30, 1994, and <citadelsecurities.com>, registered on October 16, 2003.
The disputed domain names were registered between December 28, 2017 and January 20, 2018 and are pointed to a website published at the domain name <cryptopaydomains.com>, where several cryptocurrency-related domain names are listed for sale, including the disputed domain names, which are sold at prices ranging from $13,000 up to $89,700. The website displays as contact information a telephone number with a United States international prefix and the indication of “Washington, DC”.
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.
Preliminary Procedural Issue: Complainant’s Additional Submission
The Panel notes that Complainant’s Additional Submission is mostly aimed at contesting Respondent’s contentions and is not based on additional circumstances that Complainant could not have been aware of at the time of the filing of the Complaint. The Panel finds that Complainant’ allegations contained therein, although certainly pertinent, are not decisive for the outcome of the case, which can thus be decided on the basis of the sole allegations contained in the Complaint and related Annexes.
Complainant also submitted as Annex 5 to the Additional Submission a screenshot of the website “www.cryptopaydomains.com” to which all the disputed domain names resolve. Reference to such Annex was already made in the Complaint and in the related list of Annexes, but apparently the Annex itself was not correctly delivered to the Forum at the time of the filing of the Complaint. Exercising its discretional powers according to Paragraph 10 and 12 of the Rules and since Respondent expressly admitted to be using the disputed domain names in the manner described by Complainant, the Panel deems appropriate to accept such submission and will consider it in rendering the Decision.
Moreover, in light of the contents of Complainant’s Additional Submission, which does not raise new circumstances not yet addressed by Respondent in the Response, the Panel does not deem appropriate to request further submissions from Respondent and, also bearing in mind the need for procedural efficiency, will now proceed to issue its Decision.
Complainant has establishd rights in the CITADEL mark based on its United States trademark registrations cited above. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015), asserting that a complainant’s registration with the USPTO or any other governmental authority adequately proves its rights under paragraph 4(a)(i) of the Policy.
The disputed domain names <asicminercitadel.com>, <bitcoincitadelwallet.com>, <btccitadel.com>, <citadelasicminer.com>, <citadelbtc.com>, <citadelcryptocurrency.com>, <citadelminer.com>, <citadelrepublic.com>, <citadelwallet.com>, <cryptocurrencycitadel.com>, <ethereumcitadel.com>, and <minercitadel.com> incorporate Complainant’s CITADEL mark in its entirety with the addition of descriptive terms related to cryptocurrency (“ASIC,” “miner,” “btc,” “cryptocurrency,” “wallet,” “republic,” and “ethereum”), and the “.com” gTLD.
As stated in prior cases, the addition of descriptive or generic terms and a gTLD to a complainant’s mark does not exclude any confusing similarity between a disputed domain name and mark under paragraph 4(a)(i) of the Policy. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); and Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
In view of the above, the Panel finds that the disputed domain names are confusingly similar to Complainant’s CITADEL mark according to paragraph 4(a)(i) of the Policy.
Complainant is required to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case) and Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Based on the records, Complainant has not licensed, permitted, or authorized Respondent to use Complainant’s mark and there is no evidence that Respondent, whose name is Artur Ustinov according to the WHOIS information, might be commonly known by the disputed domain names. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant claims that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, since the disputed domain names resolve to a website offering “cryptocurrency domain names” for sale, as also highlighted in the screenshot submitted as an attachment to Complainant’s Additional Submission and currently online at the time of drafting the present decision. The Panel finds that Respondent’s offer for sale of the disputed domain names, incorporating Complainant’s trademark well-known in the financial sector, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under paragraph 4(c)(i) and (iii) of the Policy. See Altria Group, Inc. v. Stacey Scott / Baldwin Inc, FA1410001584163 (Forum Nov. 12, 2014) (finding that the respondent’s only use of the resolving website was to advertise the sale of the associated domain name indicated that the respondent lacked rights and legitimate interests in the disputed domain name); and Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
In view of the above, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain names according to paragraph 4(a)(ii) of the Policy.
The Panel notes that the disputed domain names were all registered several years after Complainant’s first registration and use of the CITADEL mark. Moreover, as highlighted in the prior cases decided by the Forum cited by Complainant and referenced above, Complainant’s mark is well-known in the financial sector.
Although the Panel appreciates that the term “citadel” has also a generic meaning, it is not persuaded that Respondent registered the disputed domain names without having Complainant’s trademark in mind. Indeed, the fact that the disputed domain names have been and indeed are still pointed to a website controlled by Respondent displaying United States contact information – namely a telephone number and city -, supports the finding that Respondent, being likely operating in the US, was or could have been aware of Complainant’s well-known trademark CITADEL at the time of registration of the disputed domain names.
In view of the circumstances of the case, the Panel finds that Respondent’s offer for sale of the disputed domain names at amounts well over the out-of-pocket costs, as also demonstrated by Complainant’s Annex 5 cited above, amounts to bad faith under paragraph 4(b)(i) of the Policy. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Moreover, in light of Respondent’s redirection of the disputed domain names to a website advertising the sale of “cryptocurrency domain names” related to financial sector, the Panel also finds that Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain names resolve, according to paragraph 4(b)(iv) of the Policy.
In view of the above, the Panel finds that Complainant has proven that Respondent registered and is using the disputed domain names in bad faith according to paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <asicminercitadel.com>, <bitcoincitadelwallet.com>, <btccitadel.com>, <citadelasicminer.com>, <citadelbtc.com>, <citadelcryptocurrency.com>, <citadelminer.com>, <citadelrepublic.com>, <citadelwallet.com>, <cryptocurrencycitadel.com>, <ethereumcitadel.com>, and <minercitadel.com> domain names be TRANSFERRED from Respondent to Complainant.
Luca Barbero, Panelist
Dated: July 1, 2018
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