Citadel LLC and its related entity CE TM Holdings LLC v. Christopher Britt / Priviley LLC
Claim Number: FA2110001968516
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 Christopher Britt / Priviley LLC (“Respondent”), represented by Roberto Ledesma of Lewis & Lin, LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadelair.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge and have no known conflict in serving as Panelists in this proceeding.
Dr. Reinhard Schanda as Presiding Panelist, Diane Cabell and Richard W. Hill as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 11, 2021; the Forum received payment on October 11, 2021.
On October 12, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citadelair.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@citadelair.com. Also on October 19, 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.
A timely Response was received and determined to be complete on November 8, 2021.
On November 15, 2021 Complainant submitted an Additional Submission filed in a timely manner according to the Forum’s Supplemental Rule 7.
On November 16, 2021, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Dr. Reinhard Schanda as Presiding Panelist and Diane Cabell and Richard W. Hill as Panelists.
On November 18, 2021 Respondent submitted an Additional Submission, filed in a timely manner according to the Forum’s Supplemental Rule 7.
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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it provides financial services in the United States and around the world. Complainant has rights in the CITADEL mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,213,943, registered Feb. 27, 2007). Respondent’s <citadelair.com> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, adding only the term “air” and the “.com” generic top-level domain (“gTLD”).
Complainant further contends that Respondent lacks rights and legitimate interests in the <citadelair.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or authorized Respondent to use the CITADEL mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent purports to offer private airline services for Complainant (Citadel), which creates a risk of confusion that the domain is associated with Complainant.
Complainant finally contends that Respondent registered and uses the <citadelair.com> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant and divert users to a website for private airline services, which features a jet with the CITADEL logo on the wing. Moreover, Respondent had at least constructive knowledge of Complainant’s rights in the CITADEL mark based on the international fame of the mark.
B. Respondent
Respondent has not disputed that the <citadelair.com> domain name is similar to Complainant’s mark.
Respondent contends that its use of the <citadelair.com> domain name to parody and criticize Complainant and its CEO is a legitimate noncommercial and fair use of the domain name. Specifically, the disputed domain name includes the word “air” to further the parody scheme of posting criticism about Complainant from the perspective of a luxury airline pilot. Respondent refers to its use of Twitter to parody Complainant.
Respondent further contends that it does not use the <citadelair.com> domain name in bad faith because Respondent registered and uses the domain name for the purpose of genuine noncommercial criticism and there is a low likelihood of confusion with Complainant’s business.
In this regard the Panel notes that the disputed domain name was registered on May 14, 2021.
C. Additional Submissions
In its Additional Submission Complainant replies to the statements and allegations in the Response and contends that the domain name at dispute does not itself convey parody because nothing in the words themselves indicates that it is anything other than the original. Also the content displayed on the disputed domain is not a parody. There is no humor or criticism. Instead, the domain at dispute contains multiple elements that create the false impression that it is Complainant’s legitimate airline service. Respondent’s website is commercial in nature and Respondent’s reliance on an unrelated Twitter account is no applicable to this proceeding.
In its Additional Submission Respondent contends that Complainant’s Additional Submission is unsolicited and that the Panel should give little or no weight to Complainants’ assertions. Like the corresponding Twitter account the website at the domain name essentially is and will be for criticism and parody and to educate visitors on the truths/facts of Complainants’ dealings in the world of finance. Complainant’s arguments remain deficient, appear desperate, and lack relevance.
The Panel finds that:
(1) The domain name <citadelair.com> is confusingly similar to Complainants’ registered trademarks.
(2) The Respondent has not established rights or legitimate interests in the domain name <citadelair.com>.
(3) The Respondent has registered and is using the domain name <citadelair.com> 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are at least two Complainants: Citadel LLC and CE TM Holdings LLC and/or KCG IP Holdings LLC. Citadel LLC and CE TM Holdings LLC and/or KCG IP Holdings LLC are related companies and have ownership of various CITADEL marks. 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. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
In this case the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. As a result, the Panel treats them all as a single entity in this proceeding.
Complainant claims rights in the CITADEL mark through its registration with the USPTO (e.g., Reg. No. 3,213,943, registered Feb. 27, 2007). Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under 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).”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the <citadelair.com> domain name is confusingly similar to Complainant’s CITADEL mark because it incorporates Complainant’s mark in its entirety, adding only the term “air” and the gTLD “.com.” Adding a generic and/or descriptive term and a gTLD to the complainant’s mark does not negate confusing similarity under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
In line with the majority of Panel decisions, this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent does not have rights or legitimate interests in the <citadelair.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or authorized Respondent to use the CITADEL mark. Under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Leidos, Inc. v. Mohamet Duc / MohamesBusiness, FA2108001960026 (Forum Sept. 23, 2021) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Mohamet Duc / MohamesBusiness” as the registrant of the domain name). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information identifies “Christopher Britt / Priviley LLC” as the registrant of the domain name. Additionally, Complainant asserts that it has not licensed or authorized Respondent to use the CITADEL mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Furthermore, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent purports to offer private airline services for Complainant (Citadel), which creates a risk of confusion that <citadelair.com> domain name is associated with Complainant. A general intent to divert Internet traffic, especially to the respondent’s unrelated website, does not constitute a bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Complainant provides screenshots of Respondent’s website, showing that Respondent purports to offer private airline services.
Respondent alleges that it plans to use the disputed domain name to parody Complainant, and refers to a Twitter account to support its position.
As stated in National Alliance for the Mentally Ill Contra Costa v. Mary Rae Fouts, FA0310000204074 (Forum Nov. 28, 2003): “The question of whether or not criticism sites violate the Policy is a controversial issue, with Panels taking opposite views on the matter.” In the cited case, the content of the resolving website was clearly identified as the respondent’s personal criticism of complainant, so that no confusion was possible regarding whether the resolving website was associated with complainant.
A majority of the Panel notes that an Internet user could be confused into believing that the resolving website is associated with Complainant, that the resolving website not display any content that could be construed as parody, that Respondent did not provide any evidence of plans to post any other contents, and that the Twitter account is not relevant for the instant case, which concerns a domain name. Thus a majority of the Panel does not accept that Respondent’s conclusory allegations are sufficient to establish rights or legitimate interests.
For the above reasons, a majority of the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <citadelair.com> domain name in bad faith because Respondent uses the domain name to pass off as Complainant and divert users to a website for private airline services, which features a jet with the CITADEL logo on the wing. Passing off by making use of the complainant’s mark and logo, thereby trading off the complainant’s goodwill to promote the respondent’s unrelated business is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA, FA 1718308 (Forum Apr. 3, 2017) (finding bad faith where the respondent used the disputed domain name to resolve to a website upon which the respondent imitated the complainant’s mark, logo, and color scheme to create a “strikingly similar” website); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel notes that Complainant provided screenshots of Respondent’s website, which make use of Complainant’s CITADEL mark and logo to promote private airline services.
As already noted, a majority of the Panel does not accept that Respondent’s conclusory allegations are sufficient to establish that it really intends to post parody content on the resolving website.
Thus, a majority of the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complaint argues that Respondent registered the <citadelair.com> domain name with at least constructive knowledge of Complainant’s rights in the CITADEL mark based on the international fame of the mark. Respondent has clearly indicated that it was well aware of Complainant and its rights in the CITADEL mark when it registered the disputed domain name. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by the fame of the mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Amazon Technologies, Inc. v. nikhil garg, FA2103001935625 (Forum Apr. 1, 2021) (finding that Respondent registered and used the disputed domain names with actual knowledge of Respondent’s trademark, due to the prominence of the KINDLE mark). Thus a majority of the Panel finds bad faith registration pursuant to Policy ¶ 4(a)(iii) on the ground that Respondent has actual knowledge of Complainant’s rights in its mark when it registered the disputed domain name.
Respondent alleges that Complainant has engaged in reverse domain name hijacking. Since a majority of the Panel finds in favor of Complainant, a majority of the Panel rejects the claim of reverse domain name hijacking.
Having established all three elements required under the ICANN Policy, a majority of the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <citadelair.com> domain name be TRANSFERRED from Respondent to Complainant.
Respondent’s request for a finding of Reverse Domain Name Hijacking is DENIED.
Dr. Reinhard Schanda as Presiding Panelist,
Diane Cabell and Richard W. Hill as Panelists
Dated: November 29, 2021
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