Citadel LLC and its related entity CE TM Holdings LLC v. MN
Claim Number: FA2205001998045
Complainant is Citadel LLC and its related entity CE TM Holdings LLC (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, New York, USA. Respondent is MN (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelventuresgrp.com>, registered with Click Registrar, LLC dba publicdomainregistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 25, 2022; the Forum received payment on May 25, 2022.
On May 30, 2022, Click Registrar, LLC dba publicdomainregistry.com confirmed by e-mail to the Forum that the <citadelventuresgrp.com> domain name is registered with Click Registrar, LLC dba publicdomainregistry.com and that Respondent is the current registrant of the name. Click Registrar, LLC dba publicdomainregistry.com has verified that Respondent is bound by the Click Registrar, LLC dba publicdomainregistry.com 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 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2022 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@citadelventuresgrp.com. Also on June 2, 2022, 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 July 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the CITADEL mark, established by its ownership of the service mark registrations described below and extensive use of the mark including on its website on the Internet which it maintains to promote its international investment management services.
Complainant states that since it was established in 1990, it has grown to become one of the world’s largest investment managers, employing more than 1,250 professionals, located in offices worldwide.
Complainant submits that it has established Internet presence, hosting its official website at <www.citadel.com>, adding that through a related entity, it operates the Top Level Domain <.citadel>.
Complainant alleges that the disputed domain name <citadelventuresgrp.com>, is confusingly similar to the CITADEL mark in which is rights.
Complainant asserts that the disputed domain name fully incorporates the CITADEL mark, adding the term “ventures”, the abbreviation “grp”, and the generic top-level domain (“gTLD”) <.com>.
Complainant submits that the element “ventures” is a generic term that refers to “a business enterprise or speculation in which something is risked in the hope of profit; a commercial or other speculation”, as shown in a dictionary definition cited in the Complaint, and is a term used in the financial and investment industries.
Complainant adds that the element “grp” is an abbreviation for the word “group,” which can also be used to describe a company or corporation like the Complainant.
Complainant submits that the differences between the disputed domain name and its CITADEL mark are insignificant and do not prevent a finding of confusing similarity. See Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v. Khan, FA1812001822132 (Forum Jan. 16, 2019) (finding <citadelcm-hk.com> confusingly similar to the CITADEL mark where it fully included the CITADEL mark with the addition of the common abbreviation “cm” for consultancy management, the generic country code “hk” for Hong Kong, and the gTLD “.com”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant adds that where there is no evidence that a respondent is commonly known by the domain name at issue, the respondent has no rights or legitimate interest in the subject domain name. ICANN Policy ¶ 4(c)(ii).
Complainant submits that on May 30, 2022, the Registrar identified Respondent as “MN” and argues that nothing in Respondent’s name, “MN”, demonstrates a legitimate interest or right in the CITADEL mark. See Harry Winston, Inc. and Harry Winston, S.A. v. h, WIPO Case No. D2008-1266 (finding that Respondent had not established rights or legitimate interests pursuant to Policy paragraph 4(c)(ii) in the disputed <harrywinstondiamond.com> domain name where there was no evidence that Respondent was commonly known by the domain name).
Complainant asserts that Respondent is not an authorized licensee, distributor, retainer, or subsidiary, of Complainant, and adds that it has not granted Respondent any license, permission, or other authorization to use the CITADEL mark, the disputed domain name any other domain name which incorporates or is confusingly similar to Complainant’s CITADEL mark. Complainant submits that panels established under the Policy have found a respondent to have no rights or legitimate interests under similar circumstances. See Navistar Int’l Corp. v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent had no interest in the Disputed Domain name where complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Referring to a screen capture of the website to which the disputed domain name resolves, which has been exhibited in annex to the Complaint, Complainant argues that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name and in fact the disputed domain name was registered in attempt to capitalize unfairly on the goodwill of Complainant’s well-known CITADEL mark. The exhibited screen capture shows that the website to which the disputed domain name resolves, contains pornographic material, which Complainant submits is harmful to Complainant and its CITADEL mark.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that Complainant’s rights predate the registration of the disputed domain name and have enjoyed international fame since as early as 2002.
Complainant argues that the registrant of the disputed domain name had at least constructive knowledge of Complainant’s CITADEL marks because the CITADEL marks are registered in China, Hong Kong, and the United States and are extensively used in those locations and throughout the world.
Complainant submits that panels established under the Policy have held that similar third-party use of a well-established trademark for the purpose of redirecting customers to an adult sex site is not a use in good faith. See CCA Indus., Inc. v. Dailey, WIPO Case D2000-0148 (finding that “…this association with a pornographic web site can itself constitute bad faith.”); Ty, Inc. v. O.Z. Names, WIPO Case D2000-0370 (finding that, absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
Complainant argues that in the context of the present Complaint, Respondent’s website clearly does not offer the same services as Complainant but instead, Respondent has used the Complainant’s mark in the disputed domain name to attract unwitting Internet users to its adult sex site. See GA Modefine SA v. Pumo, WIPO Case D2006-0619 (“…the Respondent's use of the contested domain name to resolve into a porn site has the sole purpose to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products or services on his website.”). Such use, if not suspended, is likely to tarnish the Complainant’s trademark.
Complainant adds that Respondent’s use of a privacy service to conceal its identity is further evidence of bad faith. See United States Postal Service v. PROXY PROTECTION LLC, FA1612001709298 (Forum Mar. 7, 2017) (finding bad faith where “Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on an international business providing financial services, and in particular investment management, using the CITADEL mark. Complainant owns a large portfolio of service mark registrations for, and incorporating the CITADEL mark including:
· United States registered service mark CITADEL, registration number 3,213,943, registered on February 27, 2007 for services in international class 36;
· United States registered service mark CITADEL, registration number 6,138,952 registered on September 1, 2020 for services in international class 36;
· United States registered service mark CITADEL (and Design), registration number 2,812,459, registered on February 10, 2004 for services in international class 36;
· United States registered service mark CITADEL, registration number 6,138,952 registered on September 1, 2020 for services in international class 36;
· People’s Republic of China registered service mark CITADEL, registration number 6970932, registered on May 14, 2010 for goods in class 36;
· People’s Republic of China registered service mark CITADEL, registration number 6906676, registered on May 21, 2010 for goods in class 36;
· People’s Republic of China registered service mark CITADEL (and Device) registration number 6906674, registered on May 21, 2010 for goods in class 36;
· People’s Republic of China registered service mark CITADEL (and Device) registration number 6998352, registered on June 28, 2010 for goods in class 38;
· People’s Republic of China registered service mark CITADEL registration number 6998075, registered on June 28, 2010 for goods in class 38;
· People’s Republic of China registered service mark CITADEL (and Device) registration number 6906675, registered on August 7, 2010 for goods in class 35;
· People’s Republic of China registered service mark CITADEL (and Device) registration number 6998351, registered on October 14, 2010 for goods in class 39;
· People’s Republic of China registered service mark CITADEL (and Device) registration number 6998349, registered on October 14, 2010 for goods in class 42;
· People’s Republic of China registered service mark CITADEL, registration number 6998076, registered on January 21, 2011 or goods in class 39;
· People’s Republic of China registered service mark CITADEL, registration number 6998078, registered on January 21, 2011, for goods in class 42;
· People’s Republic of China registered service mark CITADEL, registration number 7139065, registered on November 13, 2020 for goods in class 42;
· Hong Kong registered trademark CITADEL, registration number 300286416 registered on September 15, 2004 for services in class 36;
· Hong Kong registered service mark CITADEL, registration number 304345092, registered on November 23, 2017 for services in class 36;
· Hong Kong registered service mark CITADEL (and Devlice), registration number 300342900, registered on December 23, 2004 for services in class 36.
Complainant has an established Internet presence and hosts a website promoting its financial services at <www.citadel.com>.
The disputed domain name <citadelventuresgrp.com> was registered on December 12,2021 and resolves to a website that displays pornographic images.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name. The registrar has confirmed that Respondent, who availed of a privacy service to conceal its identity on the published WhoIs, is the registrant of the disputed domain name, identifying as “MN”.
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 has provided uncontested evidence to prove that on the balance of probabilities it has rights in the CITADEL mark, established by its ownership of its portfolio of trademark- and service mark- registrations described above and extensive use of the mark in its international financial services business.
The disputed domain name <citadelventuresgrp.com> consists of Complainant’s mark in its entirety, in combination with the elements “ventures” and “grp” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s CITADEL mark is the initial, dominant and only distinctive element in the disputed domain name.
The element “ventures” is generic and, in context, would be taken by Internet users to be a reference to investment activities.
The letters “grp”, in context, are likely to be perceived by Internet users as an abbreviation for the word “group” inferring a group of companies.
Neither of the elements that follow Complainant’s CITADEL mark in the disputed domain name have therefore any distinguishing character.
Similarly the gTLD extension <.com> in the disputed domain name does not prevent a finding of confusing similarity with Complainant’s CITADEL mark as it would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name <citadelventuresgrp.com> is confusingly similar to the CITADEL mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name;
· Respondent purported to conceal its identity through use of a proxy service and the Registrar has disclosed that Respondent holds the registration of the disputed domain name identifying itself as "MN”;
· Respondent is not an authorized licensee distributor retainer or subsidiary of Complainant;
· Complainant has not granted Respondent any license, permission, or other authorization to use the CITADEL mark, the disputed domain name any other domain name which incorporates or is confusingly similar to Complainant’s CITADEL mark, and previous panels established under the Policy have found a respondent to have no rights or legitimate interests under similar circumstances;
· the screen capture of the website to which the disputed domain name resolves, which has been exhibited in annex to the Complaint, shows that Respondent’s is using the disputed domain name as the address of a website that contains pornographic material, which Complainant submits is harmful to Complainant and its CITADEL mark;
· panels established under the Policy have held that similar third-party use of a well-established trademark for the purpose of redirecting customers to an adult sex site is not a use in good faith;
· Respondent’s website clearly does not offer the same services as Complainant but instead, Respondent has used the Complainant’s mark in the disputed domain name to attract unwitting Internet users to its adult sex site.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
It is implausible that the disputed domain name was registered without knowledge of Complainant, its rights and its mark.
The disputed domain name, <citadelventuresgrp.com>, is a combination of Complainant’s distinctive mark with the elements “venture” and “grp”, which separately and in combination infer an association with financial services. It is improbable that this combination of elements were chosen for any reason other than to create a reference to Complainant.
This combination was, on the balance of probabilities, chosen and registered, to target and take predatory advantage of Complainant’s mark and goodwill in the CITADEL mark which by the date that the disputed domain name was registered on December 12, 2021, had achieved a substantial international reputation being used by Complainant in its business employing more than 1,250 professionals who are located in offices worldwide.
The uncontested evidence shows that Respondent is using the disputed domain name as an address of a website with pornographic images.
On the balance of probabilities Respondent is aiming to generate income from visitors who are confused by the disputed domain name, misdirected, and lured to Respondent’s website which offers adult content instead of the financial services offered by Complainant.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services purported to be offered by Respondent on his web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
This finding is supported by the fact that Responded availed of a privacy service to conceal its identity on the published WhoIs, that Respondent has failed to provide its full name on the registration details of the disputed domain name, styling itself by the initials “MN” and has not responded to the Complaint.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <citadelventuresgrp.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 5, 2022
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