DECISION

Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy

Claim Number:  FA0410000338541

PARTIES

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 <citiccards.com> and <citibusinesscards.com>, registered with Nameking.com, 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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 4, 2004; the Forum received a hard copy of the Complaint on October 4, 2004.

On October 4, 2004, Nameking.com, Inc. confirmed by e-mail to the Forum that the domain names <citiccards.com> and <citibusinesscards.com> are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 October 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 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@citiccards.com and postmaster@citibusinesscards.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 November 3, 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <citiccards.com> and <citibusinesscards.com> domain names are confusingly similar to Complainant’s CITI mark.

2. Respondent does not have any rights or legitimate interests in the <citiccards.com> and <citibusinesscards.com> domain names.

3. Respondent registered and used the <citiccards.com> and <citibusinesscards.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Citigroup, Inc. is engaged in the business of providing financial services, namely, banking, credit cards, investment consultation, analysis and planning, securities and insurance brokerage and underwriting annuities.  Complainant has provided this broad range of financial services to consumers and corporate customers worldwide under the CITI family of marks since as early as 1959.  Complainant owns more than 100 registrations or applications for the CITI family of marks through registration with the United States Patent and Trademark Office (Reg. No. 681,815, issued January 19, 1960). 

Respondent registered the <citiccards.com> domain name on October 14, 2003 and the <citibusinesscards.com> domain name on November 27, 2003.  Both domain names resolve to similar search engine websites featuring lists of “popular links” on the webpage.  Many of the links on the webpages reroute Internet users to various other websites advertising or displaying information about financial services in direct competition with Complainant’s business.  The disputed domain names also host numerous pop-up and webpage advertisements. 

Respondent has been involved in previous domain name disputes involving the registration of domain names incorporating third party trademarks.  See Citigroup Inc. v. Horoshiy, Inc., FA 290633 (Nat. Arb. Forum Aug. 11, 2004); see also InfoSpace, Inc. v. Horoshiy, Inc., FA 282775 (Nat. Arb. Forum July 23, 2004); see also Avery Dennison Corporation v. Horoshiy, Inc., FA 289048 (Nat. Arb. Forum Aug. 2, 2004); see also ADP of North America Inc. v. Horoshiy, Inc., FA 304896 (Nat. Arb. Forum Sept. 21, 2004).

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.

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.

Identical and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that Complainant has rights to the CITI family of marks as a result of its registration with the United States Patent and Trademark Office and by continuous use in commerce. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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 Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

The <citiccards.com> disputed domain name is confusingly similar to Complainant’s CITI mark because the domain name incorproates Complainant’s mark in it’s entirety, with the only difference being the addition of the extra letter “c” after the word “citi.”  The addition of extra numerals and letters is not a significant factor in the determination of whether the mark is confusingly similar.  See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ); see also 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 Complainant’s “National Geographic” mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”),

Additionally, both the <citiccards.com> and <citibusinesscards.com> domain names are confusingly similar to Complainant’s CITI mark because the domain names incorporate Complainant’s mark in its entirety, adding only the generic or descriptive terms “cards” and “business cards,” which describes Complainant’s business.  The mere addition of a generic or descriptive word to Complainant’s mark does not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  Furthermore, Complainant’s mark is a fanciful mark due to its distinctive spelling, so it is likely that the public would associate the particular spelling found in the domain names with Complainant’s CITI mark and associated products and services.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp. 1419, 12 U.S.P.Q.2d 1091, 1098 (D. Minn. 1989) (quoting treatise: "Fanciful marks, if adopted in a bona fide first use, are considered the strongest of marks because their inherent novelty creates a substantial impact on the buyer's mind").

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain names.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case 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, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response.  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 not using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not making a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using domain names that are confusingly similar to Complainant’s CITI mark to advertise a search engine website, and products and services of third parties that are in direct competition with Complainant’s financial business. See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).

Finally, Respondent offered no evidence and nothing in the record suggests that Respondent is commonly known by the <citiccards.com> and <citibusinesscards.com> domain names.  Furthermore, Complainant has never authorized or licensed Respondent to use its CITI mark in any way.  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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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. 

Registration and Use in Bad Faith

Respondent intentionally registered domain names that incorporate Complainant’s CITI mark for Respondent’s commercial gain.  Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent intentionally attempted to attract potential customers from Complainant to Respondent’s website by taking advantage of Internet users who are searching under Complainant’s CITI mark and diverting them to Respondent’s commercial website. 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website).

Additionally, Respondent’s history of involvement in numerous domain name disputes further evidences Respondent’s bad faith registration and useof the <citiccards.com> and <citibusinesscards.com> domain names pursuant to Policy ¶ 4(b)(ii).  See Hitachi, Ltd. v. Fortune Int’l Dev. Ent,  D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.); see also Calvin Klein, Inc. v. Spanno Indus., FA 95283 (Nat. Arb. Forum Aug. 21, 2000) (finding that Respondent has registered numerous domain names containing sexual references and domain names which are confusingly similar to third party trademarks; which points to a pattern of conduct on the part of Respondent, revealing that Respondent is registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names)

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.        

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <citiccards.com> and <citibusinesscards.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  November 17, 2004

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