WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION CIT Group Inc. v. John Cole Case No. D2009-0949 1. The Parties
The Complainant is CIT Group Inc. of Livingston, New Jersey, United States of America, represented by Day Pitney LLP, United States.
The Respondent is John Cole of Bolingbrook, Illinois, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2009. On July 14, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On July 17, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 11, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on August 19, 2009. 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 Complainant is a bank holding company that provides financial products and advisory services in more than fifty (50) countries around the world. Headquartered in the United States, the Complainant has offices throughout the United States, Canada, Europe, Latin America, South America and the Pacific Rim, and provides a wide range of commercial and consumer financial services. Many of the Complainant's customers are Fortune 1000 companies, and the Complainant itself is a member of the S&P 500 and the Fortune 500, with nearly USD 60 billion in managed assets.
The Complainant owns multiple registrations in the United States and in numerous other countries around the world for the trademark CIT and the CIT-formative marks THE CIT GROUP and CIT.COM. The first of these registrations was issued by the United States Patent and Trademark Office (USPTO) July 1987, and the Complainant indicates it has used the CIT mark in commerce since as early as January 1956.
The Complainant has an Internet presence, and since 1996 has continuously operated a website that is devoted to advertising, promotion and facilitation of its financial services business. The Complainant registered and uses the domain names and in connection with its website. Since 2000, “www.” has served as the primary address for the Complainant's website, and as noted above, the Complainant also has registered THE CIT GROUP and CIT.COM as trademarks.
The Respondent registered the disputed domain name on May 1, 2009, based on information contained in the WhoIs record for the domain name. The Respondent's identity was shielded by a privacy protection service until the registrar, after being contacted by the Complainant, revised the WhoIs registrant contact information for the disputed domain name to reveal the Respondent as the registrant.
The Complainant contacted the registrar after conducting an investigation regarding the website to which the disputed domain name then resolved. As is reflected in screen shots of the Respondent's website taken by the Complainant on June 30, 2009, visitors to the Respondent's website initially are taken an introductory page, which displays “Welcome to CIT” in the upper left hand corner. Upon entering the home page of the Respondent's website, Internet visitors see the name CIT BANK prominently featured in the upper left hand corner of that page as well on other pages of the website.
The “Products and Services” page of the Respondent's website promotes what purports to be an “extensive range of products and services” supported by “a large number of professional bankers and accountants with exceptional experience across many jurisdictions”. Included among the banking and financial services advertised on the Respondent's website are investment and corporate banking, cash management, and Internet banking with online accounts. Investments include “CIT Guaranteed Income Bonds”.
The “Contact CIT” page of the Respondent's website provides addresses for two supposed “CIT Bank Limited” brick and mortar locations, one in London, England, and the other in Boaz, Alabama (USA). The London address provided on the Respondent's website is in reality the address of the Complainant's London office.
In view of the foregoing, the Complainant is concerned that the Respondent has perpetrated a fraud on innocent third parties who are likely to believe that they are dealing with the Complainant, a reputable well-known bank. The Complainant notes that CIT Bank is the name of one of the Complainant's wholly owned subsidiaries in the United States. After being contacted by the Complainant, the concerned registrar disabled the Respondent's website and suspended the disputed domain name. However, the Respondent remains the holder of the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant maintains that the disputed domain name is confusingly similar to its CIT mark, which the Complainant asserts is well known and famous. The Complainant argues that its continuous and exclusive use of its CIT marks in connection with the providing of financial services to a diverse and well-established group of clients worldwide has established an exceptional amount of fame and recognition of the CIT mark, and that it has spent millions of dollars advertising and promoting its family the mark in the United States, through virtually every possible media.
The Complainant maintains that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its CIT mark, and asserts that the Respondent has not been commonly known by the disputed domain name. The Complainant argues that the Respondent obviously was aware of the Complainant and its CIT mark when registering the disputed domain name, which the Respondent has used to intentionally trade on the fame of the Complainant's mark in order to generate income. Such use, according to the Complainant, does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services, or otherwise demonstrate any legitimate non-commercial or fair use of the domain name.
The Complainant insists that the Respondent registered and has used the disputed domain name in bad faith, relying on the initial interest confusion created by the confusingly similar domain name to lure Internet visitors to the Respondent's website. The Complainant asserts that the Respondent's bad faith is further evident from the content of the infringing website, which used the designation CIT Bank and the Complainant's actual address and purported to provide services likely to be associated with Complainant. The Complainant concludes that the Respondent in bad faith has attempted to attract, for commercial gain, Internet users who, being familiar with the Complainant's well known CIT mark, would be confused as to the source, sponsorship or endorsement of Respondent's website or the products or services offered through the website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant's CIT mark, in which the Complainant has established rights. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. The disputed domain name is confusingly similar as it incorporates the Complainant's CIT mark in its entirety. Such confusing similarity is not diminished by the addition of the common or descriptive words “finance” and “services”, which are likely to be associated with the Complainant's business, and thus may actually heighten such confusion. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc.,WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Complainant has not authorized the Respondent to use the Complainant's mark, and there is no indication that the Respondent has been commonly known by the disputed domain name. The Complainant has demonstrated that its CIT mark is well known in financial circles and the record reflects the Respondent's registration of a domain name that incorporates the Complainant's mark in its entirety, and the use of the domain name with a website purportedly offering banking and financial services that if not directly competitive are closely related to the services provided by the Complainant under its CIT mark.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name, and it is undisputed that the Complainant has not authorized the Respondent to use the Complainant's CIT mark. Nor does the record reflect the Respondent's use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to any notice to it of the dispute. The record in this case clearly evinces that the Respondent's aim in registering the disputed domain name was to exploit and profit from the Complainant's mark through the creation of initial interest confusion. See Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986 (and decisions cited at Paragraph 6.18 therein). The Respondent's use of the disputed domain name to trade on Complainant's goodwill and reputation precludes any bona fide offering of goods or services under paragraph 4(c)(iii) of the Policy. See, e.g., First American Funds, Inc. v. Ult.Search, Inc,WIPO Case No. D2000-1840 (for offering under Paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under Paragraph 4(a)(iii)). See also, Madonna Ciccone v. Dan Parisi and “”,WIPO Case No. D2000-0847.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
As discussed under the preceding heading, the Panel draws a strong inference from the undisputed facts and circumstances reflected in the record that the Respondent knew of and had in mind the Complainant's mark when registering the disputed domain name. See, Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453.
Absent any explanation from the Respondent, the Panel can ascribe no motive for the Respondent's opportunistic registration and use of the disputed domain name except to capitalize on or otherwise take advantage of the Complainant's rights. See, Aubert International SAS and Aubert France SA v. T Co., supra. The Panel is of the opinion that the Respondent has used the disputed domain name in bad faith to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion in terms of paragraph 4(b)(iv) of the Policy. See, E, v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: September 1, 2009
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