WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CIT Group Inc. v. CIT Group, Inc.
Case No. D2003-0810
1. The Parties
The Complainant is CIT Group Inc., New Jersey, United States of America, represented by Pitney Hardin Kipp & Szuch, New York, United States of America.
The Respondent is CIT Group, Inc., Nicosia, Cyprus.
2. The Domain Name and Registrar
The disputed domain name is registered with Omnis Network.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 11, 2003. On October 13, 2003, the Center transmitted by email to Omnis Network a request for registrar verification in connection with the domain name at issue. On October 17, 2003, Omnis Network 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 27, 2003. The Center verified that the Complaint together with the amendment to 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 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on November 20, 2003.
The Center appointed Luca Barbero as the Sole Panelist in this matter on November 26, 2003. 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. The Panel requested an extension of time in accordance with paragraph 10(c) of the Rules.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel shall issue its Decision on the basis of the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent.
4. Factual Background
The Complaint is based on a number of trademark registration and application including the trademark registration "CIT" No. 1,000,360 in Class 36 of 1960 August 17, 1973/ December 24, 1974, THE CIT GROUP No. 1,448,848 in Class 36 of April 23, 1986 May 9, 1986 / July 21, 1987 THE CIT GROUP & Design No. 1,452,503 in classe 36 of April 23, 1986, May 9, 1986, August 11, 1987.
The respondent registered the domain name on July 17, 2002.
5. Parties� Contentions
A. Complainant
The Complainant in this administrative proceeding is CIT Group Inc., a Delaware Corporation doing business in New Jersey, United States of America.
The Complainant was founded as "Commercial Credit and Investment Company" in 1908, in St. Louis, Missouri. In 1915, the company moved its headquarters to New York City, changed its name to Commercial Investment Trust and began using the identifying initials "C.I.T." In 1924, Commercial Investment Trust became a publicly owned company and its stock was listed on the New York Stock Exchange. The Complainant presently has 600 employees and assets of $44.7 million. The Complainant began using the CIT trademark on January 1, 1956, and filed an application to register CIT in the U.S. on August 17, 1973. The Complainant underlines that the registration issued on December 24, 1974, is prima facie proof of Complainant�s exclusive rights in the United States for "business and consumer financing and industrial financing services."
While continuing its use of the CIT mark, on May 9, 1986, the Complainant also filed applications to register THE CIT GROUP and THE CIT GROUP & Design in the U.S. These registrations were issued on July 21, 1987, and August 11, 1987, respectively.
The Complainant informs the Panel that CIT Group Inc. has nearly $50 billion in assets under management and possesses the financial resources, industry expertise and product knowledge to serve the needs of clients in over 30 industries. Its clients range from homeowners to small businesses to many of the world's largest and most respected multinational corporations. The Complainant has principle offices in New York City and Livingston, New Jersey and has approximately 6,000 employees in locations throughout the United States, Canada, Europe, Latin America, South America and the Pacific Rim.
The Complainant indicates that millions of dollars were invested promoting its family of CIT Marks. For instance, between 1988 and 1998, The CIT Group, Inc. spent more than $50 million in advertising under the new name, spending between $6.5 and $7 million in advertising in the last year of that period alone. The Complainant notes that these advertisements have appeared in internationally distributed publications such as The Wall Street Journal, New York Times, Forbes Magazine, Business Week and Fortune. Beside print advertisements, the Complainant has sponsored leading cable and network television financial news programs, including PBS� "The News Hour with Jim Lehrer."
The Complainant highlights that it has had a presence on the Internet in the form of a website devoted to the advertising, promotion and facilitation of its financial services business since 1996. Complainant registered the domain name, in 1994, and the domain name, in 1996. The CIT website has continuously displayed the CIT Marks since 1996. Between January 1, 2002, and August 31, 2003, alone, the Complainant recorded more than 1,400,000 visitors to its website. Moreover, during the same period, CIT recorded approximately 900,000 unique visitors, for an average of approximately 45,000 unique visitors per month.
The Complainant owns a number of U.S. federal trademark registrations and pending applications for its CIT Marks including the trademark registration "CIT" No. 1,000,360 in Class 36 of 1960 August 17, 1973/ December 24, 1974, THE CIT GROUP No. 1,448,848 in Class 36 of April 23, 1986, May 9, 1986 / July 21, 1987, THE CIT GROUP & Design No. 1,452,503 in classe 36 of April 23, 1986, May 9, 1986, August 11, 1987.
The Panel was informed that Complainant owns registrations and pending applications for its CIT Marks in other countries throughout the world, such as Argentina, Austria, Benelux, Chile, Colombia, Denmark, France, Germany, Hong Kong, Hungary, Indonesia, Ireland, Israel, Liechtenstein, Mexico, New Zealand, Norway, Russia and the Slovak.
The Complainant emphasizes that, in light of the above, it is evident that Complainant has extraordinarily strong rights in its family of CIT Marks, which is entitled to protection from Respondent�s acts of cyber-piracy, describing in details to the Panel the Respondent�s use of the domain name on the Internet. The Complainant also encloses to the Complaint the outcome of the independent investigation conducted at Complainant�s request by Cliff Petrovsky, President of Investigative Network, Inc. According to the research, the Respondent�s company, CIT Group, Inc. of Cyprus ("CIT Cyprus "), was formed at around the same time as the July 17, 2002 registration of its domain name. In particular, despite the claims on the CIT Cyprus website that the company maintains a regional office in Canada, the investigation found no presence of CIT Group, Inc. of Cyprus, nor of any of its subsidiaries, at any location in Canada. The investigation further revealed that despite CIT Cyprus� claims of extensive professional experience in corporate finance, the investigation determined that the company�s main business is in the construction industry as an importer and distributor of various building materials for the Cyprus market, as well as a franchisor of construction-related businesses, all of which it operates under the name of its subsidiary, Tecno Industries (Cyprus) Ltd.
The Complainant underlines that the Respondent is exploiting Complainants� CIT Marks through an active website used to advertise many of the identical financial services that Complainant offers to consumers. When Internet users first types in the domain name they are immediately taken to an introductory page displaying "CIT Group, Inc." superimposed over a map of the world. The name "CIT" is written in all caps and is presented in a larger type and placed above the "Group, Inc." portion of the name. Directly beneath this use of Complainant�s trademark, a prominently placed banner, which informs visitors of the financial services offered by "CIT Group, Inc." According to the Complainant, it is highly significant that these highlighted terms describe the various divisions maintained by Complainant.
The visitor is next invited to "Click to Enter " the website. Upon clicking on these words, the visitor is taken immediately to a home page with "CIT Group, Inc." prominently placed in the middle of the page, directly below a "CIT Group " logo. Beneath this logo and Complainant name are promotional tag lines such as, "Your Gateway to the world of corporate finance," "CIT Group Inc. target is to assist you, in finding needed capital" and "From the small business to the international mega-deal, we have the lending solution for you." It is furthermore highlighted that when the Internet users click on the "Finance " tab located in the left column on the "Introduction" page of Respondent�s website, he or she is taken immediately to a page which explains the "CIT Financial Services."
The Complainant emphasizes that this page is very important since it reveals that the financial services to this point offered by CIT Cyprus are actually performed by its subsidiary "Tyhol Holdings, Ltd., a Cyprus-based offshore Complainant." Thus, prospective customers seeking the financial services of Complainant�s famous CIT Group Inc. are lured to Respondent�s website through use of its misleading domain name, and then quickly passed off to its subsidiary. According to the Complainant, the fact that Respondent does not actually provide these financial services under the "CIT Group, Inc." name provides the clearest evidence of its true intent in selecting that Complainant name and domain name and it is thus obvious that Registrant is using the domain name as a means of generating traffic to its own promotional website for Registrant�s financial gain.
With reference to the rights or any legitimate interest in the domain name by the Respondent, the Complainant states that Respondent cannot demonstrate any legitimate interest in the domain name. There exists no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use a domain name, which incorporates in their entirety or is confusingly similar to Complainant�s CIT Marks. Complainant has given no such authorization, express or implied. Furthermore, the Complainant indicates that despite the fact that Respondent has apparently established a business entity under the name "CIT Group, Inc.," this is not sufficient to create a legitimate interest in the domain name. First, Respondent registered its domain name only after Complainant had established rights in its CIT Marks. Second, Respondent specifically chose as the name for its business entity, the identical name of Complainant�s well-known global financial services company, long after Complainant had registered its CIT Marks and many years after Complainant�s company had established itself as a well-known leader in the financial services industry under that identical company name. The Complainant reaffirms that the nature of Respondent�s use of this name is not bona fide, but rather merely designed to attract customers by creating a likelihood of confusion with Complainant�s CIT Marks.
As to the bad faith registration and use according to paragraph 4b(iv) of the Policy, the Complainant affirms that the Respondent has registered and is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants� CIT Marks as to the source, sponsorship, affiliation, or endorsement of its website or location of a service on its website or location. In the present case, both Complainant�s conspicuous presence and history in the financial services industry and that Respondent offers many of the identical financial services, render it very unlikely that Respondent�s selection of a domain name identical or confusingly similar to Complainant�s well-known Marks and company name was unintentional. According to the Complainant, any distinction drawn between these entities is simply insufficient to avoid the conclusion that Respondent adopted a domain name using the Complainant�s well-known CIT Marks to attract web traffic for commercial gain, in violation of the Policy at 4b(iv).
B. Respondent
Respondent has not contested the allegations of the Complainant and is in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.1. Domain Name Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the trademark registration.
In view of the above, the Panel finds that the Complainant has proved that the domain name is similar to the trademarks of the Complainant according to paragraph 4(a)(i) of the Policy.
6.2. Rights and Legitimate Interest
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) that 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) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that 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.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.
The Panel finds that, in absence of any convincing explanation of the Respondent, it is not be considered sufficient evidence of a legitimate interest the mere adoption of CIT Group Inc. as alleged company name for the Respondent, since it is identical to the company name and confusingly similar to the well-know trademark of the Complainant to promote apparently identical business activities.
Also in Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397, the Panel concluded that the respondent had no legitimate rights noting that it was difficult to see how the respondent could not have known about the trademark NIKE. See also, Victoria�s Secret, et al. v. Atchinson Investments Ltd., NAF Case No. 96496 finding the Respondent could not have been unaware that VICTORIA�S SECRET was a famous mark and thus had no legitimate right to register a domain name using the mark.
Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor the Respondent has otherwise obtained an authorization to use Complainant�s trademark and name under any circumstance.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the Policy.
6.3. Registration and Use in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder�s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder� s website or other online location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder�s website or location.
With reference to the registration in bad faith, the Panel notes that in light of the Complainant�s well-know trademarks and company name since many years in the field of financial services in which the Respondents claims - on the website - to be active in via the alleged subsidiary "Tyhol Holdings, Ltd," it is very likely the Respondent was well aware of such trademarks also at the time of registration. In Barnes & Noble College Bookstores, Inc. v. Leisure Interactive, WIPO Case No. D2001-1216, the Panel concluded, "It is more probable than not that Respondent in registering the disputed domain name, was motivated by a desire to benefit from the widespread reputation of the BARNES & NOBLE marks" and also in Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0028 and Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809.
As to the use in bad faith, the Panel finds the paragraph 4(a)(iv) of the Policy applicable in the instant case since the Respondent, as clearly indicated in the above reported description of the website content, is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants� trademark as to the source, sponsorship, affiliation, or endorsement of its website or location of a service on its website or location.
As decided inter alia in Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 ("[The domain name] is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith"). In Christie�s Inc. v. Tiffany�s Jewelry Auction Inc., WIPO Case No. D2001-0075, the respondent registered the domain name for use in connection with online resale of Jewelry. The respondent argued that it was not trying to associate itself with Christie�s Auction House and that, even if a consumer might think it was Christie�s, the fact that respondent�s jewelry was so inexpensive would avoid any confusion. The Panel found that the respondent did not happen by chance on the Christie�s name and that, despite the difference in price, respondent was still marketing essentially the same goods.
In view of the above, the Panel finds that Respondent has registered and is using the domain name in bad faith, according to paragraph 4(a)(iii) of the Policy.
7. Decision
In light of the foregoing, the Panel decides that (a) the domain name registered by the Respondent is confusingly similar to the Complainant�s trademarks, that (b) the Respondent has no rights or legitimate interests in respect of the domain name and (c) that the domain name has been registered and used in bad faith.
Accordingly, the Panel requires that the registration of the domain name be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: December 23, 2003
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