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Citizens Financial Group, Inc. v. Forum, LLC [2005] GENDND 1924 (22 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Citizens Financial Group, Inc. v. Forum, LLC

Case No. D2005-1075

1. The Parties

The Complainant is Citizens Financial Group, Inc., Providence, Rhode Island, United States of America and Boston, Massachusetts , United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

The Respondent is Forum LLC, Roseau, Dominica.

2. The Domain Name and Registrar

The disputed domain name <cbforex.com> is registered with Fabulous.com Pty Ltd (“Fabulous.com”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2005. On October 12, 2005, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On October 13, 2005, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2005.

The Center appointed Syed Naqiz Shahabuddin as the Sole Panelist in this matter on November 16, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The following summary sets out the uncontested factual submissions made by the Complainant:

4.1 The Complainant is the tenth largest commercial bank holding company in the United States, with over 97 billion dollars in deposits and 148 billion dollars in assets, as of June 30, 2005. Headquartered in Providence, Rhode Island, the Complainant maintains more than 1600 bank branches, approximately 3000 ATMs and has more than 27,000 employees.

4.2 The Complainant provides a full line of personal and commercial banking and financial products and services, including consumer and commercial banking, consumer and commercial lending services, credit, debit and ATM card services, investment banking and investment management services. The Complainant’s banking products and services include a line of international banking services, including foreign exchange services, international cash management services and international trade services. The Complainant’s international banking business sector provides retail international banking services, including foreign bank notes and international wire transfers.

4.3 Through its efforts over the years, Complainant has established a strong customer base and is known throughout its trading area as a provider of quality financial products and services, including foreign exchange services.

4.4 The Complainant’s international banking services include an on-line foreign exchange trading platform which permits its customers to make and receive international payments over the Internet. In this regard, the Complainant uses the CBFOREX mark in connection with its on-line foreign exchange trading platform. The Complainant’s CBFOREX foreign exchange transaction initiation and reporting service also permits its customers to obtain exchange rates in real-time.

4.5 The trademark CBFOREX has been substantially, continuously and exclusively used by the Complainant since at least as early as June 30, 2003, in connection with its Internet based foreign exchange transaction initiation and reporting services. As a result of the continuous and exclusive use of the CBFOREX trademark, the Complainant has built up substantial value and goodwill. Such goodwill extends throughout the United States and abroad.

4.6 In addition, the Complainant had also applied to register the mark CBFOREX (Registration No. 2923968) in respect of financial services namely currency exchange services in the United States on July 22, 2003. The trademark was eventually registered on January 2, 2005.

4.7 The Complainant also has an active presence on the Internet. The Complainant registered its <citizensbank.com> domain name on August 15, 1995, and has operated a website at such Internet address since at least as early as May 2000.

4.8 The Complainant uses its website to advertise its banking products and services and to communicate with its customers. The Complainant’s website allows current and potential customers of the Complainant to learn about its various domestic and international banking products and services.

4.9 The Complainant’s website also permits its foreign exchange customers to access its CBFOREX service which permits the Complainant’s customers to, among other things, send and receive international payments and obtain real-time exchange rates over the Internet.

4.10 The Respondent only registered the Internet domain name <cbforex.com> with Fabulous.com on January 31, 2005, and sometime therafter, the Respondent began using the said domain name to point to a website on the Internet. The Respondent’s website is a “portal” website that provides “hyperlinks’ to several third party websites which offer or advertise foreign exchange products and services which compete with those offered by the Complainant. These competing websites include, “www.fxdd.com”, the website for FX Direct Dealer, a company that provides foreign exchange trade services and information, “www.currencyexchangeprofits.com”, a website that provides currency trading services and advice, and “www.ft.com”, a website that provides news and information regarding foreign exchange trading.

4.11 The Respondent’s “www.cbforex.com” website also contains links to the websites of businesses that compete with the Complainant’s other lines of business, including investments and credit and debit card services. For example, Respondent’s “www.cbforex.com” website provides links to the websites of Bank of America and Western Union, both of which provide competing banking and credit and debit card services and Scottrade, an investment brokerage firm that offers competing investment products and services.

4.12 The Respondent had also registered at least ten (10) other domain names containing trademarks, or miss-spellings of trademarks of others, including famous or well-known trademarks. Such domain names included <woodfieldsuite.com>, <woodfieldsuits.com>, <woodfieldhotel.com>, <starwoodhotels.com>, <sothbys.com>, <enterprisecarental.com>, <handcockfabrics.com>, <aplevacahons.com>, <grandlodgetop.com> and <appalachianwireless.com>. All of these domain names were the subject of UDRP proceedings involving the Respondent (as a respondent in each proceeding) and in which the disputed domain names were subsequently transferred to the respective complainants.

5. Parties’ Contentions

5.1. Complainant

(a) The Complainant contends that the domain name <cbforex.com> is identical to its CBFOREX registered mark, save for the inconsequential technical addition of the designation “.com”.

(b) The Complainant also contends that the Respondent has no rights or legitimate interest with respect to the domain name <cbforex.com>. In this regard, the Complainant relies on the following circumstances:

(i) there is nothing in the Respondent’s WHOIS information indicating that the Respondent is commonly known by the disputed domain name;

(ii) the Respondent did not, prior to notice of this dispute, use the <cbforex.com> domain name or a trademark corresponding to the domain name, in connection with a bona fide offering of goods or services;

(iii) the Respondent has not made a non-commercial or fair use of the confusingly similar <cbforex.com> domain name. Instead, it seeks to divert Internet traffic to its portal website that provides hyperlinks to websites of the Complainant’s competitors or websites which provide advertisements for or links to the Complainant’s competitors; and

(iv) the Complainant never authorized, licensed or otherwise permitted the Respondent to use or apply for use its CBFOREX registered mark, or any confusingly similar variation thereof.

(c) The Complainant contends further that the domain name was registered and used in bad faith. In this regard, the Complainant relies on the following circumstances:

(i) the Respondent registered and is using the domain name in dispute primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s CBFOREX trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website;

(aa) the domain name directs consumers to a website which contains hyperlinks to several third party websites that offer banking and financial services which compete with the Complainant’s banking and financial services;

(bb) based on information and belief, the Respondent is receiving a commission or pay-per-click fee every time an Internet user is directed to the third party websites for which the Respondent provides links to on its <cbforex.com> website;

(cc) previous UDRP decisions against the Respondent in respect of the Respondent’s engagement in a similar pattern of behavior indicate that the Respondent’s registration and use of those domain names were in bad faith;

(ii) the Respondent registered a domain name which comprises the Complainant’s entire CBFOREX registered trademark only on January 31, 2005, and had actual knowledge of the Complainant’s rights in its CBFOREX registered mark when it registered the <cbforex.com> domain name.

5.2. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:

(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) that the Respondent has no rights or legitimate interest in respect of the domain name; and

(c) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to the trademark CBFOREX. This is evidenced not only by the certificate of registration relating to the CBFOREX mark annexed to the Complaint but also by virtue of the evidence adduced by the Complainant relating to its use of the mark, including use through the Complainant’s “www.citizensbank.com” website.

A visual and aural comparison between the Complainant’s CBFOREX trademark and the <cbforex.com> domain name indicates that the domain name reproduces the Complainant’s CBFOREX trademark in its entirety. The Panel is satisfied that the domain name is identical to the Complainant’s trademark.

With regard to the use of the designation “.com”, numerous Panels have held that such addition is non-distinctive because it is a gTLD requirement for registration of a domain name (Gateway, Inc. v. James Cadieux, WIPO Case No. D2000-0198); (Kninklijke & Philips Elechnics NV v. Ramazan Goktas, WIPO Case No. D2000-1638).

This technical designation, by itself, ought not prevent a complainant from successfully arguing that the trademark and the domain name are identical or confusingly similar.

Based on the fact that the Respondent’s domain name is identical to the Complainant’s trademark, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.

B. Rights or Legitimate Interests

The failure of the Respondent to respond to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the domain name. The Panel could find no justification, rights or legitimate interests on the part of the Respondent to the words comprising the domain name.

There is also nothing in the WHOIS information indicating that the Respondent is commonly known by the disputed domain name nor is there any evidence to indicate that the Respondent has been using the <cbforex.com> domain name or a trademark corresponding to the domain name, in connection with a bona fide offering of goods or services.

On the contrary, the evidence led by the Complainant suggests that the domain name is being used by the Respondent to ultimately divert Internet traffic to websites owned or operated by the Complainant’s competitors. Generally, the Panel finds that the use of a confusingly similar or identical domain name to divert Internet users to competitor’s websites per se is not a use in connection with a bona fide offering of goods or services nor a legitimate non-commercial or fair use.

In previous UDRP proceedings concerning the same Respondent’s registration and use of other domain names containing well known trademarks or miss-spellings of trademarks of others for similar purposes, the various panels in the proceedings found that such conduct on the part of the Respondent did not constitute a bona fide offering of goods or services nor were they legitimate non-commercial or fair use. These decisions include the following:

(a) Woodfield Licensing Corp. v. Forum LLC, NAF Claim No. 405064 (March 4, 2005) (holding that the respondent’s use of <woodfieldsuite.com> to link consumers to the commercial websites of the complainant’s competitors was not a bona fide offering of goods or services nor a noncommercial or fair use);

(b) Woodfield Licensing Corp. v. Forum LLC, NAF Case No. 464615 (May 31, 2005) (holding that the Respondent’s use of two domain names that contain misspellings of the complainant’s mark to operate websites that features links to competing hotels and other travel related websites was not a use in connection with the bona fide offering of goods and service or a legitimate non-commercial or fair use);

(c) Starwood Hotels and Resorts Worldwide, Inc. v. Forum LLC, NAF Claim No. 406631 (March 14, 2005) (holding that the respondent’s use of <starwoodhotels.com> was not a bona fide offering of goods or services or a legitimate noncommercial fair use where the domain name was used to direct Internet traffic to a portal site containing links to services that competed with the complainant);

(d) Sotheby’s v. Forum LLC, NAF Claim No. 409449 (March 15, 2005) (holding that the Respondent’s use of <sotbys.com> to divert Internet users to the respondent’s site containing links to commercial websites that offer products or services that are in competition with the complainant’s services were not a bona fide offering of goods or services or a legitimate noncommercial or fair use).

(e) Enterprise Rent-A-Car Co. v. Forum LCC, NAF Claim No. 445529 (May 5, 2005) (finding that the respondent’s use of a confusingly similar domain name to operate a website that features links to competing car rental services is not a bona fide or legitimate non-commercial or fair use);

(f) Hancock Fabrics, Inc. v. Forum LLC, NAF Case No. 447259 (May 3, 2005) (finding that the respondent’s use of <handcockfabrics.com>, a domain name which is confusingly similar to the complainant’s HANCOCK FABRICS mark, to market goods and services that compete with those offered by the complainant is not use in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use);

(g) The Coryn Group, Inc. v. Forum LLC, NAF Case No. 473209 (June 21, 2005) (finding that the respondent’s use of the <aplevactions.com>, a domain name which is confusingly similar to the complainant’s APPLE VACATIONS mark, to redirect Internet users to third party commercial websites featuring travel services in direct competition with the complainant’s travel business is not a bona fide offering of goods and service or a legitimate non-commercial or fair use);

(h) Grand Lodge Fraternal Order of Police v, Forum LLC, NAF Claim No. 493393 (July 28, 2005) (finding that the respondent’s use of the domain name <grandlodgefop.com> in connection with a website that provides links to businesses that compete with the complainant, search engines and pop-up advertising for which the respondent presumably receives compensation, is not a bona fide offering of goods and services nor a legitimate non-commercial or fair use);

(i) East Kentucky Network LLC v. Forum LLC, NAF Case No. 528216 (September 22, 2005) (finding that the respondent’s use of <appalachianwireless.com> which completely contains the complainant’s APPALACHIAN WIRELESS trademark to re-direct Internet users to websites that offer similar goods in competition with the complainant’s business is not a use in connection with a bona fide offering of goods or service or a legitimate non-commercial or fair use).

Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

C. Registered and Used in Bad Faith

The inference which the Panel can reasonably draw from the circumstances surrounding the registration and use of the disputed domain name is that the Respondent deliberately created the domain name with the intention of diverting Internet users to its website by creating a likelihood of initial confusion with the Complainant’s mark. This practice is commonly referred to as creating initial Internet confusion.

Past panel decisions on this subject, including Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128, found that the deliberate creation of initial Internet confusion and the consequent diversion of Internet traffic is sufficient to establish bad faith on the respondent’s part notwithstanding that the Internet users who have visited the respondent’s site would not be confused into believing that it was the complainant’s site. This Panel agrees with the view that initial interest confusion, when coupled with sufficient evidence of intention or deliberate creation, can give rise to bad faith.

Other panel decisions such as NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 and Mr. Domino.com and Alejandro San Jorge, WIPO Case No. D2001-0295, also supports the finding of bad faith in circumstances where Internet users searching for a particular mark are subsequently redirected to competing websites.

The Respondent’s blemished track record of other domain name registrations and previous UDRP proceedings (as discussed in paragraph 6B above) also leads the Panel to the belief that the domain name in dispute was registered and is being used in bad faith. In all of those cases involving the Respondent, the Panelists found that the domain names were registered and used in bad faith. In some URDP decisions, such blemished record or pattern of behavior establishes bad faith and registration (see IKEA Sys. B.V. v. Tech. Educ. Ctr., WIPO Case No. D2000-0522; Bell-Phillip Televisual Produs. v. Afors., WIPO Case No. D2000-0180).

Moreover, given the factual circumstances discussed above and due to the fact that the Respondent’s domain name fully incorporates the Complainant’s CBFOREX trademark, it can also be reasonably inferred that the Respondent had actual knowledge of the Complainant’s rights to the CBFOREX registered mark when it first registered the <cbforex.com> domain name. Such actual knowledge can, in the circumstances of this case, be construed as bad faith registration and use.

Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <cbforex.com>, be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist

Dated: November 22, 2005