The Complainant is The Citco Group Limited of London, United Kingdom of Great Britain and Northern Ireland (the "UK"), represented by Paul, Weiss, Rifkind, Wharton & Garrison, United States of America ("USA").
The Respondent is David Johnson of Mississauga, Ontario, Canada 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2014. On September 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2014, the Registrar 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 October 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 23, 2014.
The Center received Complainant's first supplemental filing on October 2, 2014. The Center received Complainant's second supplemental filing on October 3, 2014. The Center received Complainant's third supplemental filing on October 9, 2014.
The Center appointed Christian Schalk as the sole panelist in this matter on November 4, 2014. 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 has reviewed the record and confirms the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceedings is English.
The Panel decided not to accept the supplemental filings of the Complainant of October 2, 3 and 9, 2014. In accordance with paragraph 12 of the Rules, it is in the Panel's sole discretion to accept further statements from either party. It is a key principle of the UDRP that both parties have to present all their arguments in the Complaint and in the Response. Supplemental filings have to remain an exception and always require a special justification as to their relevance for the case.
The Panel finds that there are no such exceptional circumstances in this case since the supplemental filings contain only further evidence to support the complainant's arguments made already in the Complaint. 4. Factual Background
The Complainant was founded more than 75 years ago and is a parent company of a worldwide group of independent financial service providers. The Complainant and its group companies provide services such as hedge fund administration, custody and fund trading, financial products and corporate and trust planning solutions to hedge funds, private equity and real estate firms, institutional firms and global 1,000 companies. The Complainant's group of companies employ more than 5,000 individuals in more than 40 countries. One of its affiliates, Citco Trust Corporation Limited, provides services especially in the field of hedge fund administration.
The Complainant owns the following trademarks:
- U.S. trademark registration No. 1729810 for the word mark CITCO, filing date October 17, 1990, covering services in International Class 36;
- U.S. trademark registration No. 1957001 for the word and device mark CITCO, filing date October 1, 1993, covering services in International Classes 35 and 36.
The Panel's own searches in the "tm view" database of the European Office for Harmonization in the Internal Market (OHIM) revealed further trademark rights of the Complainant in the term "Citco" in numerous European countries. They all predate the date of registration of the disputed domain name which took place on July 27, 2014.
An earlier version of the website to which the disputed domain name resolves shows as headline the name "Citco Trust Corporation". Below it is written "International Investment & Asset Management". In the center of the website, the Respondent describes themself among others as "a research-driven investment firm that is global in scope and client-centered in its mission." The website includes also sponsored links to companies like "Pioneer Investments, WIOF (World Investment Opportunities Funds) and Piraeus Real Estate".
A later version of the website to which the disputed domain name resolves features the name "Citco Trust Corporation" as a headline and below a login request. Then, it follows a long text about data protection to which the owner of this website pretends to be committed.
On September 9, 2014, the Complainant sent a cease and desist letter to Domains By Proxy, LLC which was mentioned as Registrant of the disputed domain name in the respective WhoIs record. The Complainant asked the Respondent in this letter to transfer the disputed domain name to the Complainant and to offer assurance of compliance in writing.
On September 16, 2014, the Complainant's attorney received an email from a certain […] from Tirana, Albania who introduced himself as "Domain Name Representative". He wrote that "we are not aware of any unauthorized use of Citco trademarks nor wish to. The domain name "" is void of any content. In the meantime I have taken this matter to our lawyers and I will forward your letter to them. I am sure that after having reviewed your letter, they will contact you." Neither the Complainant nor its attorney received any further communication from the Respondent or any person acting somehow on behalf of the Respondent nor did the Respondent comply with the Complainant's demand or otherwise respond to its letter with assurances of compliance.
On September 18, 2014, Domains By Proxy, LLC provided the Complainant's attorney with information on the identity of the Respondent and its contact details. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar with the term "Citco" in which the Complainant has rights. The Complainant argues that the disputed domain name plainly incorporates in part the Complainant's well-known trademark CITCO and that the addition of descriptive words such as "trust" and "corp" are insufficient to distinguish the disputed domain name from the Complainant's trademark. The Complainant explains further that apart from the similarity of the disputed domain name and the Complainant's trademark, the purported business segments of the parties are practically identical. In this context the Complainant reports that there have been at least two instances of actual confusion by members of the investing public. In an affidavit of the Complainant's General Counsel which has been presented before the Panel, two individuals came into contact with the operator of the disputed domain name who held himself as affiliated with the Complainant. Therefore, the Complainant is convinced that the disputed domain name has already caused confusion and is likely to cause additional confusion since customers who are familiar with the well-known company name of the Complainant could be drawn to the disputed domain name and will assume that there is an affiliation with the Complainant.
The Complainant alleges also that the Respondent has neither rights nor legitimate interests in the disputed domain name. The Complainant explains that the trademark CITCO has been used in connection with the provision of financial services for more than 75 years while the disputed domain name has been registered only in July 2014. The Complainant states further that the Respondent has neither been authorized by the Complainant to use any of its trademarks in a domain name nor has there been ever a business relationship between the parties. The Complainant believes also that the Respondent has also never been known by the disputed domain name. Furthermore, the Complainant argues that the Respondent has never been engaged in any legitimate business using the Complainant's trademark. The Complainant explains in this context that there is no information available on any business activities of the Respondent in the field of financial services. Even if the Respondent had offered such services through the disputed domain name that would have given the Respondent no right to use the Complainant's trademarks as part of a domain name. Also the fact that the Respondent falsely held themselves out as being affiliated with the Complainant in connection with the provision of hedge fund administration services precludes a finding that the Respondent has been engaged in a bona fide offering of goods and services. Another indication for the Complainant, that the Respondent has no rights or legitimate interests in the disputed domain name is that the Respondent failed to comply with the Complainant's cease and desist letter.
Furthermore, the Complainant alleges that the disputed domain name has been registered and is being used in bad faith by the Respondent. The Complainant argues in this context, that the Respondent has deliberately duplicated the Complainant's name, linked it with websites offering hedge fund administration services and purposefully sought to pass themselves off as an affiliate of the Complainant when contacted by third persons seeking for services of the Complainant. The Complainant explains further that another indication of bad faith is that the address indicated by the Respondent in the contact page of the disputed domain name is exactly the same address as the Complainant's one on the British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. The Complainant cites in this context the decisions Allstate Insurance Company v. Whois Privacy Service,WIPO Case No. D2012-0183, Chinmoy Kumar Ghose v. ICDS and Maria Silwa,WIPO Case No. D2003-0248; La Société des Bains de Mer et du cercle des étrangers à Monaco v. Around pacific,WIPO Case No. D2008-1616 and BGC Partners, Inc., BGC Partners, L.P. v. Bob Jenkins,WIPO Case No. D2009-0856, to support these arguments.
The Complainant believes also that the fact that the Respondent has concealed their identity behind the generic registration name "Domains by Proxy" constitutes an additional evidence of bad faith. The Complainant explains in this context, that the Respondent signed a domain name proxy agreement with Domains by Proxy, LLC, which states that "in exchange for becoming the Registrant of each domain name registration on [the Respondents'] behalf", Domains by Proxy shall keep the Respondents' contact details confidential. This behavior constitutes bad faith, argues the Complainant and cites WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2,WIPO Case No. D2012-0033 and Ladbroke Group Plc. V. Sonoma International LDC,WIPO Case No. D2002-0131, to underline its arguments.
The Complainant contends in this context also that Domains by Proxy, LLC shared wrong contact details for the purported registrant with the Complainant since the address, which the Complainant received from Domains by Proxy, LLC appears to be associated with a United Parcel Service store in Ontario, Canada.
The Complainant reports further that as a reaction to its cease and desist letter, a representative of the Respondent contacted the Complainant's counsel and informed him that he will forward this case to his lawyer instead of negotiating the transfer of the disputed domain name and ceasing its use. In addition, the content of the website to which the disputed domain name resolves changed several times and users attempting to access it encounter a different web page with a confusing request for login information. The Complainant cites Farouk Systems, Inc. v. QYM,WIPO Case No. D2009-1572 to support its argument that such a behavior constitutes additional bad faith use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain name can be transferred only where the Complainant has proven each of the following three elements:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the term "citco". The disputed domain name is confusingly similar to the Complainant's trademark. In accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002 and Wikimedia Foundation Inc. v. commens, Nan Jiang,WIPO Case No. D2009-1699).
In this case, the terms "trust" and "corp" have no distinctive character. The term "trust" is frequently used in the field of financial services and the term "corp" is the acronym of a certain legal entity type of a company. Therefore, the only distinctive element of the disputed domain name consists of the term "Citco", which is identical to the Complainant's trademark.
In addition, the ".com" generic Top-Level-Domain ("gTLD") suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with CITCO in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein).
The Panel finds for the above reasons that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
According to the material the Complainant has brought before the Panel, constituting a prima facie case that the Respondent lacks rights or legitimate interests, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. In particular, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant, nor has the Complainant granted the Respondent a license to use its trademark.
Furthermore, the Respondent has not rebutted the Complainant's allegations on the Respondent's lack of rights or legitimate interests, and has not provided the Panel with any explanations as to whether there are indeed legitimate reasons for the choice of the disputed domain name. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc.,WIPO Case No. D2000-0554). The Respondent has registered a domain name, which is nearly identical to the name of one of the Complainant's affiliates, Citco Trust Corporation Limited. The website to which the disputed domain name resolves, offers financial services which are identical to those provided by this affiliate of the Complainant. At least in one case, the Respondent or one of its representatives contacted a potential client of the Complainant and referred it to the website which is linked with the disputed domain name. The Panel believes that the only reason why the disputed domain name has been directed to such a website was to capitalize on the reputation and goodwill established by the Complainant in order to redirect Internet traffic intended for the Complainant away from it to the website to which the disputed domain name resolves in order to create income. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.
In addition, the Respondent continued this behaviour even after the Complainant had sent a cease and desist letter to it.
The Panel finds for the above reasons that the requirement of paragraph 4(a)(ii) of the Policy is also met. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of a domain name:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's marks as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy, for the following reasons:
It is a principle considered under prior UDRP decisions (see Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the disputed domain name will not infringe the rights of any third party.
The Panel finds that the Respondent must have been well aware of the Complainant's CITCO trademark and its business when they registered the disputed domain name. The distinctive part of the disputed domain name features one of the most important trademarks of the Complainant under which it markets financial services in many countries of the world. Furthermore, the disputed domain name resolved to a website where financial services are offered which are identical to those offered by an affiliate of the Complainant which name is nearly entirely featured on the website at the disputed domain name.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The Respondent registered the disputed domain name, which fully contains the Complainant's CITCO trademark. This domain name resolved for some time to a website where the services offered are apparently identical to the ones offered by one of the Complainant's affiliates. In addition, this website was designed in a way that potential clients of the Complainant could believe that they reached the website of the Complainant or one of its affiliates. At least in one case, the Respondent or one of its representatives directed a potential client of the Complainant to this website. This can easily occur also in cases where Internet users seeking services of one of the Complainant's affiliates type in the name of the Complainant's affiliate Citco Trust Corporation Limited in their Internet browser or find the Respondent's website as part of a link in a search engine. Given the design of the website and its content, it may let Internet users believe that they have somehow reached a website of the Complainant or one of its related companies while in fact they end up on websites of one of the Complainant's competitors. Therefore, the Panel believes that the only purpose of doing this was to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Another indication of bad faith use of the disputed domain names is that the Respondent has concealed its identity behind the name "Domains by Proxy, LLC" (see also La Quinta Worldwide L.L.C. v. Yuxiang Liu,WIPO Case No. D2012-0021 and WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, D2012-033). The underlying registrant's contact details then shared by Domains by Proxy, LLC were apparently incorrect since they appeared to be associated with a United Parcel Store in Ontario, Canada.
Furthermore, after receipt of the Complainant's cease and desist letter a representative of the Respondent contacted the Complainant's counsel and denied any unauthorized use of the disputed domain name and told this person that this matter will be forwarded to their lawyers. In addition, the Respondent changed the content of the website to which the disputed domain name resolved, which, in the Panel's view, must have confused potential clients of the Complainant. Given the nearly identity of the disputed domain name with the name of one of the Complainant's affiliates, Internet users were probably expecting something different than a nearly blank website with a login request. Also such behavior is considered by the Panel as further evidence of bad faith (see in this context also News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; see also Aktiebolaget Electrolux AB v. Domains by Proxy, Inc. / HSD LLC, Thomas Keith, WIPO Case No. D2010-0561 and Aktiebolaget Electrolux AB v. Jose Manuel, WIPO Case No. D2010-2031. 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 the Complainant.
Christian Schalk
Sole Panelist
Date: November 18, 2014
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