The Complainant CIT Group Inc., New Jersey, United States of America, represented by Day Pitney LLP, United States of America.
The Respondent is Don Del, Toronto, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “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 (the “Center”) on April 6, 2010. On April 7, 2010, 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 April 7, 2010, 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 April 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2010.
The Center appointed Derek M. Minus as the sole panelist in this matter on May 27, 2010. 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.
Due to exceptional circumstances, it was necessary for the Panel to extend the due date of decision to at least July 16, 2010, Rules paragraph 15. 4. Factual Background
The Complainant has a long history of operations in the financial industry. It was founded in 1908 as “Commercial Credit and Investment Company” in St. Louis, Missouri. In 1915 the company changed its name to “Commercial Investment Trust” and began using the CIT trademark on January 1, 1956.
The company officially changed its name to “The CIT Group Holdings, Inc.” in 1986. While continuing its use of the CIT mark, the company registered THE CIT GROUP and THE CIT GROUP & Design in the United States on July 21, 1987 and August 11, 1987, respectively, for “financial services, namely equipment financing, factoring, business credit, sales financing and capital financing”.
Today the Complainant is a substantial bank holding company that provides financial products and advisory services to more than one million customers in over fifty countries across thirty industries. It is a leader in middle market financing with nearly US $60 billion in managed assets, and has offices throughout North America, Europe, Latin America, Asia and the Pacific Rim. The Complainant is a member of the S & P 500 and Fortune 500. It maintains leading positions in asset-based, cash flow and small business administration lending, equipment leasing, vendor financing and factoring.
The Complainant provided evidence in the form of printouts of the record for each trademark, as contained in the United States Patent and Trademark Office’s Trademark Electronic Search System. In summary, the Complainant owns several trademarks incorporating the “CIT” name. Set out below is a table summarizing the Complainant’s United States federal registrations for CIT marks:
Mark
Reg. No.
Goods and Services
Date of First Use
Filing Date
Date of Reg.
THE CIT GROUP
1448848
Financial Services, namely equipment financing, factoring, business credit, sales financing and credit financing in Class 36.
April 23, 1986
May 9, 1986
July 21, 1987
THE CIT GROUP & Design
1452503
Financial Services, namely equipment financing, factoring, business credit, sales financing and credit financing in Class 36.
April 23, 1986
May 9, 1986
August 11, 1987
CIT.COM
2636270
Financial planning and financial management; providing an online computer database in the field of commercial and consumer financial in Class 36.
January, 2001
March 7, 2000
October 15, 2002
CIT
2766028
Commercial and consumer financial services, namely, asset based lending, asset management, leasing of real estate, merchant banking, structured financing, project financing, venture capital funding to emerging and start-up companies, franchise financing, and rail and aviation financing in class 36; Leasing of construction equipment in Class 37; Leasing of office equipment in class 35.
April 1, 1956
March 3, 2000
Sept 23, 2003
CIT & Design
27810120
Commercial and consumer financial services, including, secured and unsecured financing, asset based lending, leasing of real estate, merchant banking, structured financing, project financing, venture capital funding services to emerging and start-up companies, franchise financing, rail aviation financing, equipment financing, factory agencies, lines of credit lending, syndication and equity investments in Class 36; Industrial asset management services, namely, auctioning, liquidating and re-marketing industrial assets, leasing office equipment in Class 35.
January 24, 2000
March 3, 2000
Nov 11, 2003
CIT (Stylized)
3291765
Corporate, commercial and institutional real estate advisory services relating to real estate investment and corporate real estate portfolios; strategic planning regarding acquisitions and divestitures of real estate assets and designing strategic financing solutions for real estate investments; financing real estate investments for corporate, commercial and institutional clients in Class 36.
Nov 7, 2006
August 3, 2005
Sept 11, 2007
CIT
3291762
Corporate, commercial and institutional real estate advisory services relating to real estate investment and corporate real estate portfolios; strategic planning regarding acquisitions and divestitures of real estate assets and designing strategic financing solutions for real estate investments; financing real estate investments for corporate, commercial and institutional clients in Class 36.
Nov 7, 2006
August 3, 2005
Sept 11, 2007
In 1997 the company changed its name to The CIT Group, Inc. Through a series of transactions, The CIT Group, Inc. was reorganised as CIT Group Inc. in 2002. CIT Group Inc. is the successor in interest to all of the assets, including the trademarks, owned by The CIT Group Inc. for use in commerce.
The Complainant also owns registrations and pending applications for its CIT Marks in other countries throughout the world, including Hong Kong, SAR of China, the European Union, and the United Kingdom of Great Britain and Northern Ireland.
According to the Complainant, it has spent millions of dollars advertising and promoting its family of CIT Marks in the United States, through virtually every possible media, including television, radio, newspapers, magazines and relevant trade magazines. As a result, the CIT Marks have acquired considerable fame and recognition throughout the financial services industry. As an example, studies have found that in 2007, 73% of the Complainant’s prospects were familiar with the CIT trademark. 5. Parties’ Contentions A. Complainant
The Complainant asserts that:
(a) The Domain Name which was registered by the Respondent on July 30, 2009, is confusingly similar to the names and trade marks in which the Complainant has extensive rights. The Domain Name consists of the words “onlineservices” together with the “CIT” mark.
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name.
(c) The Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;
(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 by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a Response as the Panel considers applicable (Rules, paragraph 14(b)). A. Identical or Confusingly Similar
The Complaint submits that the disputed Domain Name is confusingly similar to the names and trademarks in which the Complainant has extensive rights. Here the disputed Domain Name incorporates the Complainant’s CIT trademark but adds the generic words “online” and “services” to the top level “.com” identifier.
Whether a domain name which incorporates a complainant’s trademark together with a prefix or suffix is confusingly similar to the trade mark has been considered in a number of UDRP decisions. It has been held that a domain name consisting of the complainant’s trademark and ending with the “.com” gTLD is confusingly similar to the complainant’s trademark (see Sanofi-Aventis v. The Counsel Group, LLC,WIPO Case No. D2005-0650). In Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318 the panel stated that the “mere addition of a generic word to a famous trademark is not sufficient to avoid confusion”.
Earlier panel decisions have found that the incorporation of a trade mark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark (see Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201). It was decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant’s registered trade mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”.
The incorporation of a trade mark in its entirety, followed by a common term can also be sufficient to establish that a domain name is identical or confusingly similar to a trademark. In PepsiCo, Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, the panel stated: “All of the contested domain names fully incorporate the trademark ‘PEPSI,’ which is a distinctive mark. The mere addition of common terms such as ‘sports’, ‘basketball’, ‘soccer’, ‘volleyball’, ‘rugby’ and the like to the ‘PEPSI’ mark, does not change the overall impression of the designations as being domain names connected to the Complainant.”
In Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 the respondent had registered domain names which included many well known Australian trademarks with the addition of the word “online” together with “.com” at the end. The panel found that each of the disputed domain names were confusingly similar to the complainant’s trademark. It noted that the respondent had simply attached to the complainant’s well known trademark a descriptive term “denoting a modern form of communication and trading with which the customers and others familiar with the Complainant would expect [its] mark to be or to become associated.”
The Complainant notes that it has long used the term “online” in one of its domain names .
The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trademark in which the Complainant has rights, as neither the addition of the descriptive words “online services” nor the gTLD “.com” nor both together, is sufficient to prevent confusion with the Complainant’s unique registered trademark. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name as the Respondent is not now and has never been commonly known by the Domain Name. To the Complainant’s knowledge, the Respondent has never conducted a legitimate offline business under the names; “CIT”, “CIT Online Services”, “CIT Bank” or “CIT Bank Limited”. The Complainant has not expressly authorized the Respondent, nor is there any relationship between the Complainant and the Respondent that would give rise to any license, permission, or implied authorization by which Respondent could own or use the Domain Name.
The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, as envisaged by paragraph 4(c)(iii) of the Policy, but rather is using the domain name to attract visitors to its site in order to generate income. In those circumstances, the Respondent can have no right or legitimate interest in the Domain Name. See Carfax, Inc. D/B/A Carfax v. Setyo Djoenaaedi & Associates,WIPO Case No. D2001-0986 and Madonna Ciccone, p/k/a Madonna v. Dan Parisi,WIPO Case No. D2000-0847 where it was determined that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services … to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy”.
Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, the burden is on the Respondent to establish its right or legitimate interest in the disputed Domain Name (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174). The Respondent has not demonstrated or established any such right or legitimate interest.
There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary the Complainant has provided evidence that the disputed Domain Name resolved to a website where the Respondent claimed to deal in similar services as the Complainant and even featured the Complainant’s business names and branch address.
There is no evidence that 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 complainant’s trademark. The Panel therefore finds that the Complainant has therefore made a prima facie case of the Respondent’s lack of rights to or legitimate interests in the disputed Domain Name. The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative are:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complainant primarily frames its submissions with respect to the bad faith use and registration of the Domain Name as pursuant to clause 4(b)(iv) of the Policy. According to the Complainant, the Respondent’s actions were an attempt to attract, for commercial gain, Internet users who, being familiar with the well known CIT Marks, would be confused as to the source, sponsorship or endorsement of Respondent’s website or the products or services offered through the website. See American Institute of Floral Designers v. Palm Coast Floral, Inc.,WIPO Case No. D2000-0335; America Online, Inc. and AOL International,WIPO Case No. D2000-0654; Encyclopedia Britannica Inc. v. S,WIPO Case No. D2000-0753.
The Complainant has established that the CIT mark is in global use and predates the Respondent’s registration of the Domain Name. It states that the Respondent has no authorization from the Complainant to use its famous trademark. The registration of the disputed Domain Name by the Respondent without authorization is evidence of its bad faith registration. See Heineken Brouwerijen B.V. v. Mark Lott,WIPO Case No. D2000-1487 (where there was a finding that the international fame of a trademark precludes innocent registration of a confusingly similar domain name). Also, when a mark is well known, it has been determined that “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name [can] be claimed by Respondent.” See Guerlain S.A. v. PeiKang,WIPO Case No. D2000-0055.
Far from the Respondent being unaware of the Complainant’s trademark, the Complainant provides evidence that the Respondent’s use of its trademark in the Domain Name, was part of a wider scheme. The content of the of the website established at the address, uses the designation “CIT Bank” and “CIT Bank Limited” and the actual address of the Complainant's UK subsidiary, and purports to provide services which are likely to be associated with the Complainant. In previous cases there has been a finding of bad faith when “it appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned web site for commercial gain due to confusion with Complainant's mark”. See United Airlines, Inc. v. United Airline Dot Com, WIPO Case No. D2002-0835; Cigna Intellectual Property, Inc. v. Yun Sung Lee, WIPO Case No. D2003-1042; I v. Tenenbaum Ofer, WIPO Case No. D2000-0075.
The activities of the Respondent in adopting the identity of the Complainant clearly conflicts with Complainant’s trademarks by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant’s products and services (see Ente Autonomo Fiera Internazionale di Milano v. b.o.n.d. srl, WIPO Case No. D2004-0791 where use of a domain name confusingly similar to a widely-known registered trademark held to be not for a bona fide business or commercial purpose).
In summary, the Complainant began using the CIT Marks on its website in 1996 and as the primary address for its website since 2000. The Complainant reports that over the past two years it has had to deal with numerous fraudulent websites that have used the ‘CIT” trademark to confuse consumers into believing that the websites are owned, associated with or endorsed by CIT Group.
The list of four circumstances set out in paragraph 4(b) of the Policy, which are deemed to indicate bad faith, is expressly non-exclusive. The Panel finds that the Respondent has clearly sought to profit from an unauthorized association with the Complainant’s CIT trademarks by using the Domain Name to increase traffic to its website. The Respondent has sought to cloak itself with the identity of the Complainant to give credibility to its activities. This is clear evidence of its use of the Domain Name in bad faith. 7. Decision
It is therefore established that the Complainant has made out each of the three elements that it is required to prove. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be immediately transferred to the Complainant.
Derek M. Minus
Sole Panelist
Dated: July 16, 2010
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