Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v. Sarah Potter
Claim Number: FA2001001877793
Complainant is Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, California, United States. Respondent is Sarah Potter (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelcm-ch.com>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of 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 January 6, 2020; the Forum received payment on January 6, 2020.
On January 7, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <citadelcm-ch.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 January 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2020 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@citadelcm-ch.com. Also on January 8, 2020, 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 January 31, 2020, 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 <citadelcm-ch.com> domain name is confusingly similar to Complainant’s CITADEL mark.
2. Respondent does not have any rights or legitimate interests in the <citadelcm-ch.com> domain name.
3. Respondent registered and uses the <citadelcm-ch.com> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant, Citadel Enterprise Americas, LLC, provides financial services in the United States and around the world. Complainant holds a registration for the CITADEL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,213,943, registered Feb. 27, 2007).
Respondent registered the <citadelcm-ch.com> domain name on February 4, 2019, and uses it to pass off as Complainant in order to conduct a phishing scheme.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the CITADEL mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <citadelcm-ch.com> domain name uses Complainant’s CITADEL mark and merely adds the term “CM,” which is an abbreviation for consultancy management, and the country code “CH” for Switzerland, along with the “.com” gTLD. The addition of descriptive terms, along with a country code and a gTLD, does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Accordingly, the Panel finds that Respondent’s <citadelcm-ch.com> domain name is confusingly similar to Complainant’s CITADEL 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 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 satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent lacks rights or legitimate interest in the <citadelcm-ch.com> domain name, as Respondent is not commonly known by the disputed domain name. Respondent has no license or consent to use the CITADEL mark. The WHOIS information for the disputed domain name lists the registrant as “Sarah Potter.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus Respondent has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant also argues that Respondent is not using the <citadelcm-ch.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to impersonate Complainant as part of a fraudulent scheme. The use of a domain name to pass off as a complainant in order to conduct a fraudulent scheme is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”) Complainant demonstrates that Respondent’s disputed domain name resolves to a website that refers to Complainant and solicits money and information from Complainant’s customers. Accordingly, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant shows that Respondent registered and uses the <citadelcm-ch.com> domain name in bad faith as Respondent uses it to perpetrate fraud and create the impression that Respondent is affiliated with Complainant. The use of a disputed domain name to confuse Internet users in an attempt to pass off as a complainant is evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CITADEL mark prior to the registration of the <citadelcm-ch.com> domain name. The use of a disputed domain name that includes a famous mark and resolves to a webpage that offers similar services may be evidence of actual knowledge per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant provides screenshots of the disputed domain name’s resolving webpage that shows the use of Complainant’s CITADEL mark and the offer of similar services. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the CITADEL mark, which constitutes bad faith per Policy ¶ 4(a)(iii).
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 <citadelcm-ch.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 1, 2020
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