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Generic Top Level Domain Name (gTLD) Decisions |
Citigroup Inc. v. Horoshiy, Inc. a/k/a
Horoshiy
Claim
Number: FA0406000290633
Complainant is Citigroup Inc. (“Complainant”), represented
by Bruce Goldner of Skadden, Arps, Slate, Meagher & Flom LLP, Four Times Square, New York, NY 10036. Respondent is Horoshiy,
Inc. a/k/a Horoshiy (“Respondent”), F.D.
Rooseveltweg #518, Curacao, AN.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <citibankonlinebanking.com> and <citibankbusinessonline.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 28, 2004; the Forum
received a hard copy of the
Complaint on July 1, 2004.
On
July 1, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the Forum that the domain names <citibankonlinebanking.com> and <citibankbusinessonline.com>
are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the names. Iholdings.com,
Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
July 12, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
August 2, 2004 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@citibankonlinebanking.com and
postmaster@citibankbusinessonline.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 6, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the
Honorable Charles K.
McCotter, Jr. (Ret.) 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."
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citibankonlinebanking.com>
and <citibankbusinessonline.com> domain names are confusingly
similar to Complainant’s CITIBANK marks.
2. Respondent does not have any rights or
legitimate interests in the <citibankonlinebanking.com> and <citibankbusinessonline.com>
domain names.
3. Respondent registered and used the <citibankonlinebanking.com>
and <citibankbusinessonline.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
On October 8,
1998, Complainant, Citigroup Inc., was formed through a business combination
between Citicorp and Travelers Group Inc.
Complainant is in the business of providing financial services,
including consumer and commercial lending, credit card services, investment
and
advisory services, real estate services and venture capital services, banking
services and numerous other services.
Through its
wholly owned subsidiaries, Citicorp and Citibank, N.A., Complainant owns more
than 100 trademark registrations for a variety
of marks featuring the CITI mark
(Reg. No. 1,181,467 issued December 8, 1981), including CITIBANK (Reg. No.
691,815 issued January
19, 1960), CITIBANKING (Reg. No. 1,284,589 issued July
3, 1984), and CITIBUSINESS (Reg. No. 2,263,621 issued July 20, 1999).
Complainant,
through its predecessors in interest, has used the CITIBANK, CITIBANKING, and
CITIBUSINESS marks (“CITIBANK marks”) continuously
and extensively since 1959
in connection with its financial services business. Complainant owns over 1,700 branches and 5,100 ATMs in
approximately 100 countries.
Complainant owns
approximately 800 domain name registrations that feature the CITI marks,
including many featuring the CITIBANK marks.
Some of the domain name registrations owned by Complainant include <citibankonline.com>,
<citibank.com>, and <citi.com>.
Respondent
registered the <citibankbusinessonline.com>
domain name on November 12, 2003 and the <citibankonlinebanking.com> domain
name on February 13, 2003. Respondent is
using the domain names to offer search engine websites that feature links to
Complainant’s services and those of many
of its competitors in the financial
services business. Some of the links
are for such categories as “top sites related to Citibank” and “top sites
related to Online Banking.”
Additionally, typing in either of the disputed domain names generates
“pop-up” advertisements that result in “mousetrapping” the Internet
users who
must close all the windows to exit the websites.
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.
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 has
established with extrinsic proof in this proceeding that it has rights in the
CITIBANK marks through registration
with the United States Patent and Trademark
Office and by continuous use of its marks in commerce for the last forty-five
years. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The
<citibankonlinebanking.com> and <citibankbusinessonline.com>
domain names registered by Respondent are confusingly similar to Complainant’s
CITIBANK marks, because the domain names include several
of the marks in their
entirety, adding only generic or descriptive terms. Furthermore, the descriptive terms used describe aspects of
Complainant’s business such as the terms “business” and “banking.” The mere addition of a generic or
descriptive word to a registered mark does not negate the confusing similarity
of Respondent’s domain
names pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant
combined with a
generic word or term); see also Space
Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with
a generic term that has an obvious
relationship to Complainant’s business).
The <citibankonlinebanking.com>
domain name includes a combination of Complainant’s CITIBANK and CITBANKING
marks with the generic term “online,” while the <citibankbusinessonline.com>
domain name combines Complainant’s CITIBANK and CITIBUSINESS marks with the
generic term “online.” The practice of
combining more than one of Complainant’s marks does not cancel out the
confusingly similar nature of Respondent’s
domain names. See Nintendo of Am. Inc. v.
Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity
where respondent combined Complainant's POKEMON and PIKACHU marks
to form the
<pokemonpikachu.com> domain name).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the <citibankonlinebanking.com>
and <citibankbusinessonline.com> domain names, which contain
Complainant’s CITIBANK marks in their entirety. Due to Respondent’s failure to respond to the Complaint, the
Panel will assume that Respondent lacks rights and legitimate interests
in the
disputed domain names. In fact, once
Complainant makes a prima facie case in support of its allegations, the
burden shifts to Respondent to show that it does have such rights or legitimate
interests
in the domain names pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate
interests with respect to
the domain name it is incumbent on 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 Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with
respect to the domain name, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and
legitimate
interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that Respondent has no rights or legitimate interests in the domain
name because Respondent
never submitted a response or provided the Panel with
evidence to suggest otherwise).
Furthermore,
where Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See 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”);
see also Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (holding that Respondent’s failure to respond allows all reasonable
inferences of fact in
the allegations of Complainant to be deemed true).
Respondent is
using the <citibankonlinebanking.com> and <citibankbusinessonline.com>
domain names to redirect Internet users to similar websites that feature
search engines, “pop-up” advertisements, and links to online
banking and
business websites, which are in direct competition with the products and
services offered by Complainant under its CITIBANK
marks. Respondent’s use of domain names that are
confusingly similar to Complainant’s CITIBANK marks to redirect Internet users
interested
in Complainant’s products to a commercial website that offers a
search engine and products and services that compare with those offered
by
Complainant 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
of the domain names pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227
(Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of
Complainant’s mark to attract Internet
users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona fide
offering of goods
or services nor a legitimate noncommercial or fair use of the
disputed domain names); see also Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links
to other websites, is
not a legitimate use of the domain names).
Finally,
Respondent offered no evidence and nothing in the record suggests that
Respondent is commonly known by the <citibankonlinebanking.com> and
<citibankbusinessonline.com> domain names. Furthermore, Complainant has not licensed
Respondent to use the CITIBANK marks.
Thus, Respondent has not established rights or legitimate interests in
the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known
by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark
and never applied for a license or permission from
Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent
intentionally registered the <citibankonlinebanking.com> and <citibankbusinessonline.com>
domain names that contain Complainant’s well-known CITIBANK marks for
Respondent’s commercial gain.
Respondent’s domain names divert Internet users who seek Complainant’s
CITIBANK marks to Respondent’s commercial website through the
use of domain
names that are confusingly similar to Complainant’s marks. Furthermore, Respondent is unfairly and
opportunistically benefiting from the goodwill associated with Complainant’s
CITIBANK marks. Respondent’s practice
of diversion, motivated by commercial gain, constitutes bad faith registration
and use pursuant to Policy ¶
4(b)(iv). See
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also
Luck's Music Library v. Stellar Artist
Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent
had engaged in bad faith use and registration by linking the
domain name to a
website that offers services similar to Complainant’s services, intentionally
attempting to attract, for commercial
gain, Internet users to its website by
creating a likelihood of confusion with Complainant’s marks); see also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where
similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or
is sponsoring the services offered at the
site).
Furthermore,
Respondent registered the <citibankonlinebanking.com> and <citibankbusinessonline.com>
domain names for the primary purpose of disrupting Complainant’s business by
redirecting Internet traffic intended for Complainant
to Respondent’s website
that directly competes with Complainant.
Registration of a domain name for the primary purpose of disrupting the
business of a competitor is evidence of bad faith registration
and use pursuant
to Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat.
Arb. Forum July 7, 2000) (finding that
the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered
the names primarily for the
purpose of disrupting Complainant's business).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <citibankonlinebanking.com> and <citibankbusinessonline.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
August 11, 2004
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