Citizens Financial Group, Inc. v. Whois Privacy Protection Service, Inc. c/o Whois Agent
Claim Number: FA0604000676666
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., PO Box 389, Raleigh, NC 27602. Respondent is Whois Privacy Protection Service, Inc. c/o Whois Agent (“Respondent”), PMB 368, 14150 NE 20th St. - F1, c/o citizensonlinebanking.com, Bellevue, WA 98007.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <citizensonlinebanking.com>, registered with Enom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 14, 2006.
On April 12, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <citizensonlinebanking.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@citizensonlinebanking.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <citizensonlinebanking.com> domain name is confusingly similar to Complainant’s CITIZENS BANK ONLINE mark.
2. Respondent does not have any rights or legitimate interests in the <citizensonlinebanking.com> domain name.
3. Respondent registered and used the <citizensonlinebanking.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a leading provider of financial services, including retail and commercial banking services, and is the eighth largest commercial bank holding company in the United States. Complainant was originally founded in 1828 as a small community bank and is currently owned by the Royal Bank of Scotland Group plc.
Complainant owns trademark registration for the CITIZENS BANK ONLINE mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,407,272 issued November 21, 2000). Complainant has used the CITIZENS BANK ONLINE mark in connection with its banking services since 1990. Specifically, Complainant uses its CITIZENS BANK ONLINE mark to promote and provide financial services including retail, commercial and online banking services throughout the United States.
Respondent registered the <citizensonlinebanking.com> domain name on September 23, 2002. Respondent’s domain name resolves to a website displaying links to, and information for, banking and financial services in the form of a search engine website. The domain name also displays links to Complainant’s direct and indirect online banking competitors, such as Wells Fargo.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant currently holds trademark registration rights for the CITIZENS BANK ONLINE through registration with the USPTO since 2000. Previous panels have found that a complainant’s federal trademark registration establishes the complainant’s rights in the mark. Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). In the present case, Complainant has met this threshold requirement through registration of its mark with the USPTO.
Complainant argues that Respondent’s <citizensonlinebanking.com> domain name is confusingly similar to Complainant’s CITIZENS BANK ONLINE mark for several reasons. These reasons include the addition of “ing” onto “bank” and the inverting of that word with the word “online.” In NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001), the panel found the <nationalrentalcar.com> domain name to be confusingly similar to the mark NATIONAL CAR RENTAL and held that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other.” Therefore, the Panel finds that Respondent’s inversion of Complainant’s CITIZENS BANK ONLINE mark in the present case does not adequately distinguish the disputed domain name from Complainant’s mark. See Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5, 2003) (“Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.”).
Moreover, the addition of the generic top-level domain “.com” in Respondent’s <citizensonlinebanking.com> domain name does not negate the confusing similarity of the disputed domain name from Complainant’s CITIZENS BANK ONLINE mark pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have any rights or legitimate interests in the <citizensonlinebanking.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). However, the Panel now chooses to examine whether the evidence supports Respondent’s rights or legitimate interests.
In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found the respondent did not have any rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name. In the present case, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Furthermore, in Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the panel found that the
respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with the complainant, was not a bona
fide offering of goods or services.
Respondent in the present case is using the disputed domain name to
redirect Internet users to a search engine website that also displays links to
Complainant’s direct and indirect online banking and financial competitors,
such as Wells Fargo. Thus, the Panel
concludes that Respondent’s portal website featuring
links to third party websites offering competing goods and services is not a
use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). The
Panel further finds that Respondent has failed to establish rights or
legitimate interests in the <citizensonlinebanking.com> domain
name pursuant to Policy ¶ 4(a)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding
that the respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use of the domain
name).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
In G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) the Panel found that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using a confusingly similar domain name to attract Internet users to its commercial website. In the present case, Respondent’s <citizensonlinebanking.com> domain name incorporates Complainant’s mark and diverts Internet users to various commercial websites, including those in competition with Complainant. The Panel concludes that such activity is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)).
Additionally, in Samsonite Corp. v. Colongy Holding, FA 94313 (Nat. Arb. Forum April 17, 2000), the panel held that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration. Because Respondent is located in the United States, Complainant’s registration of its CITIZENS BANK ONLINE mark with the USPTO serves as constructive notice of Complainant’s rights in the mark to Respondent. Thus, the Panel finds that by registering a domain name that combines a variation of Complainant’s mark despite its constructive knowledge of Complainant’s rights, Respondent has registered the <citizensonlinebanking.com> domain name in bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
The Panel finds that Complainant has satisfied the requirements of 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 <citizensonlinebanking.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 29, 2006
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