Complainant is Citigroup Inc. of New York, United States of America, represented by Greenberg Traurig, LLP, United States of America.
Respondent is Dyk Dylina of Hailuoto, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2011. On April 18, 2011, the Center transmitted by email to Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiD a request for registrar verification in connection with the disputed domain name. On April 20, 2011, Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiD transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On April 21, 2011, the Center sent an email communication to the parties in both English and Finnish regarding the language of the proceeding. On April 21, 2011, Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on April 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 18, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on May 26, 2011. 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
In addition to other applications and registrations, Complainant is the owner of the following trademark registrations:
CITIBANK, Finland Registration No. 64519, covering “banking services” and having a registration date of October 29, 1975.
Due to the extensive use and registration of the CITIBANK mark around the world, the CITIBANK mark has become well-known under the laws of the United States and other relevant jurisdictions. Further, the marks have obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s CITIBANK mark as it consists of the entirety of the mark and adding the generic element “careers”. Therefore, the disputed domain name and Complainant’s CITIBANK mark are confusingly similar to each other.
Complainant also alleges that Respondent has never operated any bona fide or legitimate business under the disputed domain name, and is not making a protected noncommercial or fair use of the disputed domain name. Complainant argues that the disputed domain name has been put to use in a pay-per-click advertising scheme, some of which ads promote Complainant’s competitors.
Complainant argues that Respondent is not commonly known as “”. The WhoIs record reveals that Respondent is commonly known as “Dyk Dylina”.
Complainant informs it has not granted Respondent any license, permission, or authorization by which he could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant informs that Respondent is located in Finland where Complainant has trademark rights on the national trademarks registry which pre-exist the registration date of the disputed domain name by decades. Therefore, Respondent had actual notice or at least constructive notice of Complainant’s well-known mark.
Complainant also argues that the totality of the circumstances indicate Respondent knew of Complainant at the time of registration of the disputed domain name since the disputed domain name is nearly identical to Complainant’s CITIBANK mark and is being used in conjunction with related services. Moreover, Respondent’s website makes direct reference to Complainant on its home page. This proves Respondent’s actual knowledge of Complainant and its marks.
Also, the disputed domain name is used by Respondent 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 Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Respondent’s pay-per-click scheme to convert traffic to Respondent’s commercial website is one of the four explicit examples of bad faith use found in the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Regarding the language of the proceeding, while the Registration Agreement is in Finnish, Complainant filed a request for English as language of the proceeding mainly based on the following contention that the disputed domain name and the website to which it resolves are in the English language.
Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” As the Registration Agreement in the instant case is in Finnish, the default language of the proceeding would have been Finnish. However, paragraph 11(a) of the Rules reserves to the panel the authority to determine the language of the proceeding having regard to the circumstances of the case. In view of Complainant’s request, the Panel is now called upon to exercise its authority under paragraph 11(a) of the Rules.
The Panel takes into consideration that the Rules are based on the principles of fairness to the parties and the recognition that the UDRP should provide an inexpensive and expeditious avenue for resolution of domain name disputes. Such principles apply to the determination of the language of the proceeding. See Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293.
The Panel notes that the website at the disputed domain name is entirely in English. In addition, the Panel also notes that the Center’s communication regarding the language of the proceeding to the parties was made in both Finnish and English and that Respondent was given an opportunity to object to Complainant’s request. However, Respondent did not comment on the language of the proceeding by the specified due date.
Having considered all circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith, Policy, paragraph 4(a). A. Identical or Confusingly Similar
According to Complainant’s arguments and the exhibits attached to the Complaint, it is proved that Complainant has intellectual property rights over the expression CITIBANK.
The Panel finds that Complainant’s registered CITIBANK trademarks are well-known in its field of activity and have a strong reputation in many countries. The Panel finds that the disputed domain name is confusingly similar with Complainant’s CITIBANK trademark. The only difference between Complainant’s registered trademark and the disputed domain name is the addition of the generic and non-distinctive word “careers”.
The Panel finds that the difference pointed above is not enough to characterize the disputed domain name as being distinct from Complainant’s registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd.,WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant”). Moreover, the Panel finds that adding a generic expression such as “careers” is likely to increase the possibility of confusion amongst consumers.
The Panel finds that this similarity can mislead Internet users who search for Complainant’s services, or for a opened position to work for Complainant and divert them to the disputed domain name.
The Panel, therefore, finds that Complainant has established the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Taking into consideration that Respondent has failed to respond to Complainant, the Panel will assume that Respondent lacks rights or legitimate interests in the disputed domain name.
As a matter of a fact, Complainant has made a prima facie case in support of its allegations and, due to this, the burden of production shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the Complaint was filed, the disputed domain name directed Internet users to parking pages offering goods and services in competition with Complainant’s products and services. The Panel finds that this is not a bona fide offering of goods and services.
So, in view of the above, the Panel finds that Complainant has established the second condition of paragraph 4(a) of the policy. C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’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 the respondent’s site or of a product or service offered on the respondent’s site.
In this case, Respondent has intentionally registered the disputed domain name which totally reproduces Complainant’s well-know trademark CITIBANK. By the time the disputed domain name was registered, it is unlikely that Respondent did not have knowledge of Complainant’s rights on the trademark CITIBANK.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its CITIBANK registered trademark when the disputed domain name was registered. Moreover, Complainant submitted consistent evidence that its trademark is well-known. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent knowingly infringed Complainant’s trademark when it registered the disputed domain name.
Also, under the paragraph 4(b)(iv) of the Policy, it is evidence of bad faith that, “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”. Respondent used Complainant’s well-known trademark to attract users to a parking page displaying pay-per-click links. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
In light of these, the Panel finds Respondent registered and used the disputed domain name in bad faith. Complainant has established the third element of paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Eduardo Machado
Sole Panelist
Dated: June 9, 2011
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