Complainants are Kenneth C. Griffin and Citadel LLC of Chicago, Illinois, United States of America, represented by Clare Locke LLP, United States of America.
Respondent is Riley Barnes of Chicago, Illinois, United States of America. 2. The Domain Names and Registrar
The disputed domain names, and (the “Domain Names”), are registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2017. On September 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 29, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an amendment to the Complaint on October 3, 2017.
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” 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2017.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 8, 2017. 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
Complainant Kenneth C. Griffin (Complainant Griffin) is an American investor, hedge fund manager, philanthropist, and the founder, Chief Executive Officer (CEO), and majority owner of Complainant Citadel LLC (Complainant Citadel). Complainant Citadel is one of the world’s largest alternative investment management firms with an estimated USD 27 billion in investment capital.
The Domain Name was registered by Respondent on July 8, 2016.
The Domain Name was registered by Respondent on February 24, 2016. 5. Parties’ Contentions A. Complainant
Complainants state that this dispute concerns an effort by Respondent to impersonate Complainant Griffin. Respondent engaged in a scheme to impersonate Complainant Griffin on social media and to profit off the goodwill generated by his well-known name. Respondent’s scheme involved creating a fake Twitter profile under the name “Ken Griffin” and the Twitter handle “@KenCashGriffin”. The Twitter profile featured a picture of the real Ken Griffin, which Respondent took from an online article about Complainant Griffin in the Chicago Tribune newspaper:
Complainants allege that Respondent has a history of registering domain names that use the names of prominent Chicagoans, and that Respondent’s apparent purpose in doing so is to enrich himself by impersonating well-known figures online.
(i) Identical or confusingly similar
Complainants state that they have common law trademark rights in the marks Ken C. Griffin and Kenneth C. Griffin because, under UDRP precedent, Complainant Griffin’s personal name is being used for trade or commerce due to his close association with Complainant Citadel and its commercial services. The Domain Names registered by Respondent are identical to these marks.
Complainants submit that they have acquired common law trademark rights in the marks Ken C. Griffin and Kenneth C. Griffin because common law trademark rights in a personal name are established where the name is well-known and used in connection with commercial activity. Here, Complainants state the name and mark “Ken Griffin” is commonly understood by the public to be associated with Complainant Griffin due to his fame and success in the investment and financial communities. Moreover, Complainant Griffin’s name is used for a commercial purpose because it is inextricably associated with the commercial activities of his company, Complainant Citadel, which relies on Complainant Griffin’s name and reputation to market its investment services.
Complainants states that Complainant Griffin is regularly profiled and featured in prominent national media outlets and publications, including Forbes, CNBC, Bloomberg, The Wall Street Journal, The New York Times, and The Chicago Tribune. The American public associates the name “Ken C. Griffin” specifically with Complainant Griffin and not with any other individuals, as shown by the fact that a Google search for “ken c. griffin” yields about 8,590,000 results, the first eight pagesof which refer only to him. The commercial community identifies Complainant Griffin with Complainant Citadel, and Complainant Griffin is seen by the media and public as the alter ego of Complainant Citadel. A search for “Ken Griffin” on the website of The Wall Street Journal reveals numerous headlines in which he is referred to as “Citadel’s Ken Griffin” and “Citadel Founder Ken Griffin”. An identical search for “Ken Griffin” on the website of CNBC, an American business news program, similarly returns numerous headlines and articles referring to Complainant Griffin as “Citadel’s Griffin” and “Citadel head Ken Griffin,” and referring to the company as “Ken Griffin’s Citadel”. Complainant Griffin’s name is so ubiquitously associated with Complainant Citadel’s investment services that a Google search of “ken griffin citadel” yields in excess of 293,000 results. Even a Google search for “ken c. griffin” alone yields results for at least the first nine pages that relate directly to his role as founder and CEO of Complainant Citadel.
Complainants rely on the UDRP case, Chung, Mong Koo and Hyundai Motor Company v. Individual,WIPO Case No. D2005-1068, where the panel set forth a list of guiding factors to apply in “cases involving business people who are the leaders of companies that do not carry their own names,” in order to determine “whether the evidence establishes a sufficient nexus between the name itself and its use and association in trade and commerce.” In order to determine whether Complainant Griffin’s personal name is being used for trade or commerce due to his position as founder and CEO of Complainant Citadel, a UDRP panel should examine: (1) the extent to which the commercial community identifies the individual with the company; (2) the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company; (3) the extent of the personal ownership of the company by the individual; (4) the degree of personal control that the individual exercises over the enterprise; (5) the extent to which the individual is identified with any major achievements of the enterprise; and (6) whether it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.
Complainants contend that each of these factors weigh in their favor, and therefore Complainants have common law trademark rights in Complainant Griffin’s name. With respect to the first two factors, the commercial community identifies Complainant Griffin with Complainant Citadel, and Complainant Griffin is seen by the media and public as the alter ego of Complainant Citadel.
With respect to the third and fourth Chung factors – the extent of the personal ownership of the company by the individual and the degree of personal control that the individual exercises over the enterprise – Complainants state that Complainant Griffin founded Citadel in 1990 and has at all times served as the company’s CEO. Regarding the fifth Chung factor, which examines the extent to which the individual is personally identified with the success of the company, Complainants state that major publications such as The New York Times have chronicled the story of how Complainant Griffin began trading in his dorm as a college student, started the company shortly after graduation in 1990, and built it into a large and successful hedge fund. Complainant Griffin was also widely credited in the American and international media with steering Complainant Citadel through the financial crises of 2008 that led to the collapse of numerous prominent hedge funds, and for helping it to strongly rebound following the recession. The Chung panel also found persuasive the “uncontradicted evidence is that [Complainant] has been internationally recognized as a leading figure in the [relevant] industry and that the awards showered on him have not simply been because of his involvement in that industry in general, but because it has been solely in connection with the [Company].” Chung, supra.
Finally, the sixth Chung factor asks whether the individual and the company have an interest in protecting the individual’s name for commercial use. Complainants have such an interest because of Complainant Griffin’s close association with the services offered by the company that he founded and operates. In addition to being routinely identified as the personification of Complainant Citadel in the press, he is also highlighted prominently on Complainant Citadel’s website, which features his biography and includes interviews and press reports featuring him speaking on behalf of the company.
Complainants contend that all of the factors that led the panel in the Chung case to determine that “[t]he evidence and the public record show that [the individual complainant] has put his personal imprimatur on the company and that the company is now virtually identified with him” are present in this case and weigh in Complainants’ favor. Accordingly, the evidence demonstrates that Complainants have common law trademark rights in the name of Ken Griffin.
Complainants state that the Domain Names registered by Respondent are identical to Complainants’ common law marks, and that a complainant has an enforceable right in both his full name and other names by which he is typically known. See Steven Rattner v. BuyThisDomainName (JohnPepin),WIPO Case No. D2000-0402. The Domain Names here incorporate both Ken Griffin’s full name – Kenneth C. Griffin – and the name he more commonly goes by – Ken C. Griffin – in their entireties. Therefore, they are identical to marks in which both Complainant Griffin and Complainant Citadel have common law trademark rights.
(ii) Rights or legitimate interests
Complainant states that Respondent is not named “Ken C. Griffin” or “Kenneth C. Griffin,” but rather is identified in the relevant WhoIs database as “Riley Barnes”. And as set forth above, a Google search shows that the names Ken C. Griffin and Kenneth C. Griffin commonly refer to and are used by Complainants, and not by Respondent.
Moreover, Complainants submit that Respondent is not using the Domain Names in connection with the bona fide offering of any goods or services or for any fair use, but rather as part of a scheme to impersonate Complainant Griffin on the Internet. As noted above, in August 2017 Complainants discovered the Twitter profile “Ken Griffin” operated by Respondent. The Twitter profile featured a doctored picture of Complainant Griffin, which Respondent took from an online article in a major newspaper. In addition to using his name and likeness, Respondent also posted Complainant Griffin’s residential address, and then added a link to the website at the Domain Name . Respondent apparently registered the Domain Name and used it on the false Twitter profile to bolster the false impression that this Twitter profile was actually that of Complainant Griffin. Respondent also registered the Domain Name and, upon information and belief, may have used it for months before changing the web address for his fake Twitter handle to . Complainants argue that Respondent’s use of the Domain Names for this purpose is not legitimate.
Complainants state that based on the tweets posted to Respondent’s fake Twitter account, Respondent’s intent appears to have been to use Complainant Griffin’s name in an effort to gain Twitter followers, by convincing the public that the account belonged to Complainant Griffin. Respondent’s fake Twitter feed included numerous sponsored tweets, which are paid for by advertisers. Thus, it appears that Respondent was attempting to use the website to further his impersonation of Complainant and to obtain more followers, and thus earn revenue from publishing advertisers’ tweets. This use – intended to dupe potential Twitter followers and to profit from mislabeled services that are in no way connected to Complainants – is not bona fide.
Finally, Complainants contend that in addition to having no bona fide commercial reason for use of the Domain Names, Respondent has no legitimate noncommercial or fair use purpose for using them. Respondent has not been transparent and has not publicly announced that he has or intends to use the Domain Names for noncommercial or fair uses, and has falsely pretended that the Domain Names are used in connection with the marks and personas of Complainants. In addition, where Respondent creates an air of anonymity in his use of the Domain Names by using the WhoIs registration option to obscure his contact information, there is a presumption against finding rights or legitimate interests in a noncommercial or fair use of the Domain Names.
(iii) Registered and used in bad faith
Complainants contend that Respondent has registered and used the Domain Names in bad faith as part of an effort to impersonate Complainant Griffin and profit from the use of his name.
Complainants contend that Respondent’s bad faith is demonstrated by (1) his course of conduct in registering and parking numerous domain names using famous persons’ names in order to prevent the actual individuals from using those domain names; (2) by trying to use the Domain Name to attract Internet users to his fake Twitter account for commercial gain; and (3) by the entirety of the circumstances and Respondent’s actions of repeatedly creating false online personas to impersonate and embarrass well-known individuals.
Complainants state that under Paragraph 4(b)(ii) of the Policy, it is considered evidence of use and registration of a domain name in bad faith if the respondent has registered the domain name in order to prevent the owner of the mark from using it and the respondent has engaged in a pattern of such conduct. The evidence shows a pattern of such conduct by Respondent. Complainants claim Respondent has a habit of impersonating and targeting prominent and wealthy Chicagoans, and of registering domain names in those persons’ names and provides evidence of three similar instances (which given the nature of the conduct, the Panel chooses not to specifically identify those individuals concerned).
Complainants further allege that, in addition to registering domain names using the names of prominent Chicagoans, Respondent also appears to have created other fake Twitter profiles. These accounts are similar to the fake Twitter account for Complainant Griffin and regularly “tweet” at each other, suggesting that Respondent is responsible for creating them. The fact that none of these domain names contain any substantive content, but rather are simply parked, demonstrates that Respondent’s intention was to register them to prevent Complainant Griffin and others from registering domain names using their names. Under paragraph 4(b)(ii) of the Policy, this is evidence of bad faith registration of the Domain Names.
Complainants further contend that under paragraph 4(b)(iv) of the Policy, Respondent has engaged in bad faith by intentionally attempting to attract, for commercial gain, Internet users to his 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 his website or location. As noted above, Respondent engaged in a scheme to impersonate Complainant Griffin on Twitter, by using his name, image and address in a Twitter profile. Respondent also listed the Domain Name as the user’s website on the Twitter profile in a further bid to create the false impression that the account belonged to Complainant Griffin. As noted above, the account contained numerous tweets for which a user is paid by an advertiser to promote a product on his Twitter feed. It is thus apparent that Respondent’s motive in impersonating Complainant Griffin was to use his fame to attract more Twitter followers – Internet users who were misled to believe that the account actually belonged to Complainant Griffin – in order to profit from publishing promoted tweets. The use of the Domain Name on the Twitter profile was clearly intended to further the deception that the profile actually belonged to Complainant Griffin. Thus, Respondent’s bad faith is demonstrated by his effort to use the Domain Name to attract, for commercial gain Internet users to a different on-line location – the fake Twitter account – by creating a likelihood of confusion among Internet users who were led to believe that the Twitter account actually belonged to Complainant Griffin.
Finally, Complainants state that the four bad faith circumstances set forth in paragraph 4(b) of the Policy are without limitation. Thus, the Panel is entitled to find bad faith based not only on the presence or absence of the listed factors, but also based on the overall circumstances and full picture of Respondent’s conduct. See Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000- 0003 (noting that when considering whether passive holding of a domain name constitutes bad faith, “the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior”). Here, Respondent’s actions of impersonating Complainant Griffin and several other prominent Chicagoans, combined with the lack of any legitimate purposes for creating the fake Twitter accounts and registering the offending domain names, demonstrate that Respondent acted in bad faith. Accordingly, Complainants request that the Domain Names be transferred to Complainant Griffin. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in their claims, Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith. A. Preliminary Issue – Consolidation
Complainants request that their complaints be consolidated because Complainant Griffin and Complainant Citadel have a common grievance against Respondent and it would be procedurally efficient to permit the consolidation of their complaints.
Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. With regard to consolidation, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, states that “[i]n assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
The Panel observes that Complainant Griffin is the founder and CEO of Complainant Citadel. Further, as discussed above, Complainants have a common grievance against Respondent. Given the common grievance (and with Respondent having failed to submit a Response), the Panel determines it would be procedurally efficient to permit the consolidation of complaints. The Panel decides that Complainants’ request for consolidation should be granted. See Chung, supra (finding that consolidation was appropriate for Hyundai and its Chairman and CEO, where both the CEO and the company claimed common law trademark rights in his personal name). B. Identical or Confusingly Similar
The Panel finds that Complainants have established common law rights in the marks Ken C. Griffin and Kenneth C. Griffin. The Panel accepts the evidence of Complainants’ longstanding use of Complainant Griffin’s name in connection with commercial activity, including involvement in the financial and investment communities. Further, Complainants have submitted evidence to show that Complainant Griffin is seen by the relevant public as the alter ego of Complainant Citadel. Common law rights in a personal name are established where the name is “well- known” and “used in connection with commercial activity.” Halle Berry and Bellah Brands Incorporated v. Alberta Hot Rods,WIPO Case No. D2016-0256. Complainant has demonstrated, as set forth above, that the guiding factors applied by the panel in Chung, supra – used to determine “whether the evidence establishes a sufficient nexus between the name itself and its use and association in trade and commerce” – are present in this case and confirm that Complainant Griffin put his personal imprimatur on Complainant Citadel and that the company is now virtually synonymous with him. See Rattner, supra (finding that, as a high-profile provider of investment banking and financial advising, Steven Rattner’s name was inseparable from the services he offered and sufficient for a common law trademark in his name). Accordingly, the evidence demonstrates that Complainants have common law trademark rights in the marks Ken C. Griffin and Kenneth C. Griffin.
Further, the Panel determines that the Domain Names are identical to Complainants’ common law marks, as the Domain Names incorporate the marks in their entireties and add no other elements.
Accordingly, the Panel finds that that the Domain Names are identical to a trademark in which Complainants have rights, in accordance with paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Here, the Panel finds that Complainants have made out a prima facie case, while Respondent has failed to respond to the Complaint. The Panel finds that Complainants have not authorized Respondent to use their common law marks; that Respondent is not commonly known by the Domain Names; that Respondent has not used the Domain Names for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the evidence indicates that Domain Names have been used as part of a scheme to improperly impersonate Complainant Griffin on the Internet. Respondent registered the Domain Names and used at least one of them in connection with a false Twitter profile of Complainant Griffin. Respondent’s fake Twitter feed included numerous sponsored tweets, paid for by advertisers. This use of the Domain Names, intended to mislead Twitter followers while profiting from this confusion, is not legitimate.
The Panel finds that Complainants have made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. In the Panel’s opinion, there is nothing in the past and present uses of the Domain Names by Respondent or more generally in the circumstances of the registration and use of the Domain Names, which indicates that Respondent has any rights or legitimate interests therein.
The Panel therefore finds that Complainants have established the second element of the Policy in accordance with paragraph 4(a)(ii). D. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainants demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel finds that the Domain Names were registered and are being used in bad faith. The Panel observes that Respondent registered the Domain Names, which incorporate Complainants’ common law marks Ken C. Griffin and Kenneth C. Griffin in their entireties, in an effort to wrongly target Complainant Griffin. There is no other plausible reason for why Respondent registered the Domain Names.
As discussed above, the Domain Names have been used in connection with a misleading scheme to impersonate Complainant Griffin with the use of social media and to confuse members of the public, while profiting from that confusion. Respondent engaged in a scheme to impersonate Complainant Griffin on Twitter, by using his name, image and address in a Twitter profile, while also listing the Domain Name as the related website to create the false impression that the account belonged to Complainant Griffin. Further, Complainants have submitted evidence that Respondent appears to have engaged in a pattern of targeting and impersonating prominent Chicagoans, registering domain names in those persons’ names. The evidence indicates that Respondent’s impersonated Complainant Griffin to use his fame to attract Twitter followers, thereby profiting from sponsored tweets. Further, in accordance with paragraph 4(b)(ii) of the Policy, Respondent has registered and used the Domain Names in bad faith because Respondent registered them in order to prevent Complainants from using them and Respondent has engaged in a pattern of such conduct with other prominent Chicagoans, as the evidence demonstrates is the case here.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Names were registered and are being used in bad faith. Accordingly, Complainants have satisfied the third element 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 Domain Names, and , be transferred to Complainant Griffin.
Christopher S. Gibson
Sole Panelist
Date: December 10, 2017
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