Www-citicards.com

The timeline behind www-citicards.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Citigroup Inc. v. Whois Guard a/k/a WhoisGuard Protected Claim Number: FA0705000988845 PARTIES Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady, Jr., of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is WhoisGuard a/k/a WhoisGuard Protected (“Respondent”), 8939 S. Sepulveda Blvd, Westchester, CA 90045. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <www-citicards.com>, registered with Enom, Inc. PANEL 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. Terry F. Peppard as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 16, 2007. On May 17, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <www-citicards.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 May 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 2007 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@www-citicards.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On June 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding. 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: Complainant is a worldwide provider of financial services. In connection with the provision of these services, Complainant has registered a number of trademarks and service marks with the United States Patent and Trademark Office (“USPTO”), including the CITICARD service mark (Reg. No. 1,423,239, issued December 30, 1986). Respondent registered the disputed domain name on April 4, 2006. Respondent is not commonly known by the disputed domain name. The disputed domain name resolves to a website featuring links to third-party, commercial websites, some of which directly compete with Complainant’s business. Respondent’s <www-citicards.com> domain name is confusingly similar to Complainant’s CITICARD mark. Respondent does not have any rights or legitimate interests in the <www-citicards.com> domain name. Respondent registered and uses the <www-citicards.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS (1) the domain name registered by Respondent is identical or confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith. DISCUSSION 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. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a 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: i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and ii. Respondent has no rights or legitimate interests in respect of the domain name; and iii. the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant asserts rights in the CITICARD mark through registration of the mark with the USPTO. Complainant’s registration and subsequent extensive use of the CITICARD mark establish rights in the mark in accordance with Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that a complainant’s registration of the MADD mark with the United States Patent and Trademark Office established that complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that, by a complainant’s registration of the AMERIDREAM mark with the USPTO, that complainant established rights in the mark pursuant to Policy ¶ 4(a)(i)). The disputed domain name merely adds the letter “s” to Complainant’s protected mark, adds the generic top-level domain (“gTLD”) “.com,” and places “www” and a hyphen as a prefix to the mark. The use of the “www” followed by a hyphen (or “www dash”) prefix is merely a slight modification of the customary “www” followed by a period (or “www dot”) prefix found on most domain names. The addition of the letter “s,” the gTLD “.com,” and use of the “www dash” prefix does nothing to distinguish the disputed domain name from Complainant’s mark as that mark is fully contained within the disputed domain name. See Sony Kabushiki Kaisha v. EOS1/EOS1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (finding the <www-sony.com> domain name to be confusingly similar to the SONY mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that a top level of the domain name such as “.net” or “.com” does not affect a domain name for purposes of determining whether it is identical or confusingly similar to a competing mark); further see Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to a complainant’s NATIONAL GEOGRAPHIC mark). The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests In instances where a complainant has made out a prima facie case in support of its allegation that a respondent has no rights or legitimate interests in a domain name, the burden shifts to Respondent to set forth concrete evidence indicating that it has such rights or interests in accordance with Policy ¶ 4(a)(ii). See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under Policy ¶ 4(a)(ii) and the factors listed in Policy ¶ 4(c), a complainant must first make out a prima facie case that a respondent has not used or made demonstrable preparations to use a disputed domain name in connection with a bona fide offering of goods or services, that that respondent is not commonly known by the disputed domain name, and that that respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to that respondent to show otherwise); see also F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007): Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names. Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent has no right or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists). On the record before us, it is undisputed that Respondent’s domain name resolves to a website offering links to third-party commercial websites, including some that offer products and services that directly compete with Complainant’s business. Such use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that a respondent had no rights or legitimate interests in the <jawsoflife.com> domain name because that respondent was diverting Internet users to the website of a complainant’s competitor); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links, some of which resolved to that complainant’s competitors, was not a bona fide offering of goods or services). We also note that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. It appears, from a review of Respondent’s WHOIS registration information, that the registrant of the <www-citicards.com> domain name is “Whois Guard a/k/a WhoisGuard Protected.” In light of this information, as well as Respondent’s failure to provide countervailing evidence, we conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.” The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith As referenced above, Respondent’s disputed domain name resolves to competing commercial websites. Respondent presumptively enjoys financial enrichment from its diversionary use of the disputed domain name. Such use constitutes an attraction for commercial gain, which suggests registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent was diverting Internet users searching for a complainant to its own website and likely profiting from click-through fees); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” In addition, it appears that Respondent registered the <www-citicards.com> domain name with at least constructive knowledge of Complainant’s rights in the CITICARD mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002). For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED. Accordingly, it is Ordered that the <www-citicards.com> domain name be forthwith TRANSFERRED from Respondent to Complainant. Terry F. Peppard, Panelist Dated: June 18, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.