Citadel LLC and its related entity CE TM Holdings LLC v. Damien Browne
Claim Number: FA2109001963035
Complainant is Citadel LLC and its related entity CE TM Holdings LLC (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, California, USA. Respondent is Damien Browne (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadel.fail> (“Domain Name”), registered with Google 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2021; the Forum received payment on September 9, 2021.
On September 10, 2021, Google LLC confirmed by e-mail to the Forum that the <citadel.fail> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 2021 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@citadel.fail. Also on September 14, 2021, 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 October 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two 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.” 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 has reviewed the Complaint and is satisfied that that CE TM Holdings LLC is a related entity of Citadel LLC and the holder of the CITADEL mark which it licenses to Citadel LLC. This is sufficient to establish a sufficient nexus or link between the Complainants such that they should be treated as a single entity in this proceeding referred to in the singular, as “Complainant”.
A. Complainant
Complainant is a global investment institution. Complainant has rights in the CITADEL mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,138,952, registered Sept. 1, 2020). The Domain Name <citadel.fail> is identical or confusingly similar to Complainant’s CITADEL mark because it wholly incorporates Complainant’s mark, merely adding in the “.fail” generic top-level domain (“gTLD”) to form the domain name.
Respondent does not have any rights or legitimate interests in the <citadel.fail> domain name because Respondent is not commonly known by the <citadel.fail> domain name nor has Complainant authorized Respondent to use the CITADEL mark. Additionally, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because the domain name resolves to an unrelated third-party website, being the website for the computer games company GameStop.
Respondent registered and uses the <citadel.fail> domain name in bad faith because Respondent redirects users to an unrelated website. Furthermore, bad faith is indicated by Respondent’s use of a privacy service. Finally, Respondent acted with constructive and actual knowledge of Complainant’s rights in the CITADEL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CITADEL mark. The Domain Name is confusingly similar to Complainant’s CITADEL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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”).
Complainant asserts rights in the CITADEL mark through its registration of the mark with the USPTO (e.g., Reg. No. 6,138,952, registered Sept. 1, 2020). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <citadel.fail> domain name is identical to Complainant’s CITADEL mark because it wholly incorporates Complainant’s CITADEL mark while merely adding a gTLD. The addition of a gTLD to a mark is irrelevant in determining whether a disputed domain name is identical or confusingly similar to a mark under Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the CITADEL mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Damien Browne” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
Prior to the commencement of the proceeding the Domain Name resolved to the website operated by an unrelated third party, being GameStop. Presently the Domain Name resolves to an incomplete website with the title “has Citadel failed?” and the promise of providing “Analysis on the recent FINRA fines paid by Citadel and its affiliates” and more information in respect of the “January 2021 Robinhood situation”. The Panel is aware of the broad outlines of the short squeeze event involving the video company GameStop in January 2021, however, in the absence of a formal Response and explicit evidence from the Respondent of its intentions and use of the Domain Name, it is not prepared to find, based on a website created after the commencement of the proceedings, that the Respondent has rights or rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
Rather the Panel finds that Complainant’s uncontradicted evidence that the Domain Name was, prior to the commencement of the proceedings, used to resolve to a third party retail website prima facie unrelated to the meaning of the Domain Name (for which Respondent may receive revenue as part of an affiliate or referral program), is sufficient to establish a prima facie case that Respondent has no rights or rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). Use of a confusingly similar domain name to redirect users to an unrelated website may be evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, August 18, 2021, Respondent had actual knowledge of Complainant’s CITADEL mark given Complainant’s considerable reputation and use of the CITADEL mark and related marks for over 25 years. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s CITADEL mark for commercial gain by using the Domain Name to resolve to an unrelated website (GameStop) for which the Respondent may receive affiliate revenue. Use of a disputed domain name to redirect users to an unrelated website may be evidence of bad faith under Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”).
Further to its comments made in respect of its finding of Rights and Legitimate Interests, the Panel notes that there is a possibility that the Domain Name may have been registered and intended to be used for some sort of noncommercial comment on the GameStop short squeeze. With certain exceptions, the Policy does not deem use of a Domain Name for non-commercial free-speech to be registration and use in bad faith. However in the absence of a formal Response, and given that the website promising comment on the GameStop short squeeze is both incomplete and created after the proceeding was commenced, the Panel is entitled to accept the reasonable allegations set forth in the Complaint and find that the Domain Name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citadel.fail> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: October 11, 2021
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