The Complainants are Citadel Enterprise Americas LLC of Chicago, Illinois, United States of America (“USA” or “U.S.”), and KCG IP Holdings LLC of Chicago, Illinois, USA (together referred hereinafter as the “Complainant”), represented by Winston & Strawn LLP, USA.
The Respondent is Qiang Wei of Fuzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with West263 International Limited (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2019. On March 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 2, 2019.
On March 28, 2019, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on April 1, 2019. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on April 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 1, 2019. 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 was founded in 1990 and has since grown to be a large and renowned financial services company. The Complainant claims to employ more than 1,250 professionals, who are located in offices worldwide, and claims it manages several USD billions in investment assets.
The Complainant owns a portfolio of trademark registrations for CITADEL (word and device marks) in a number of jurisdictions, for example in the USA, registration number 3213943, registered on February 27, 2007 and in China, registration number 6870932, registered on May 14, 2010. The relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on March 4, 2019. The Complainant submits evidence that on the date of the amended Complaint, the disputed domain name directed to an active website, which was operated as an elaborate platform offering unauthorized CITADEL-branded investment and financial services. However, on the date of this decision, the disputed domain name directs to an inactive webpage. 5. Parties’ Contentions A. Complainant
The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for CITADEL, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are famous and well regarded in the financial and investment industries, and provides evidence of its marketing materials as well as prior domain name decisions in which the CITADEL marks were recognized as well-known trademarks. Moreover, the Complainant provides evidence that the disputed domain name was linked to an active website, operating as an elaborate platform offering CITADEL-branded investment and financial services. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the domain name and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 First Preliminary Issue: Consolidation as to the Complainant.
The Complainant in this administrative proceeding is Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC. On the subject of consolidation, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states: “In 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 rules that the legal affiliation and the existence of a trademark license agreement covering the CITADEL trademarks is sufficient to prove that the first and second Complainant have a specific common grievance in this case. This is also consistent with previous domain name decisions, see for instance Mozilla Foundation, Mozilla Corporation v. WhoisGuard Protected / isha chaudhary, Domains By Proxy, LLC / Anand Soni,WIPO Case No. D2018-2814. Moreover, the Panel considers that the requested consolidation would, especially in absence of an objection from the Respondent, be equitable and procedurally efficient in this case. The Panel therefore allows the consolidation as to the Complainant. 6.2 Second Preliminary issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant states that it could not locate the Registration Agreement, but that to the best of its knowledge (referring to earlier domain name decisions), the language of the Registration Agreements should be Chinese. The Complainant filed both its Complaint and its amended Complaint in English, each time including a motivated request that the language of proceedings be English. The Respondent did not provide any comments on the language of the procedure and did not submit any arguments on the merits.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English; the fact that the Respondent did not comment on the language of the procedure and did not submit arguments on the merits (while it had the right to do so in Chinese or English); the fact that the Complainant provides evidence that the text on the website linked to the disputed domain name, when it was still online, was in English, from which the Panel deducts that the Respondent understands, and is able to communicate in English; and the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English. 6.3. Discussion and Findings on the merits
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the trademark CITADEL (whether directly or under license from its affiliated company, see the consolidation decision above), based on its registration and use of CITADEL as a trademark, incidentally commencing several years prior to the registration of the disputed domain name.
Moreover, as to confusing similarity of the disputed domain name with the Complainant’s marks, the disputed domain name consists of the combination of two elements, which are the Complainant’s CITADEL trademark and the addition of “-wm”. The Complainant argues that “-wm” is an abbreviation of “wealth management”. Upon review of the evidence adduced by the Complainant, in particular the evidence of the contents of the website to which the disputed domain name was linked before it was deactivated, the Panel agrees that, in this context, “-wm” is used as a reference to “wealth management”.
The Panel refers to the WIPO Overview 3.0, section 1.7 “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”; and section 1.8: “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, which is clearly recognizable as such. The Complainant’s trademark is also the dominant feature of the disputed domain name. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element required by the Policy is fulfilled. B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith
Given the fame of the Complainant’s trademarks, the registration of the disputed domain name, which incorporates such trademarks in their entirety, is clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns, trademarks in CITADEL and uses these marks extensively, including in the Respondent’s home jurisdiction China, through its offices in Shanghai and Hong Kong. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the Complainant provides evidence that the initial version of the website linked to the disputed domain name was used as an elaborate platform offering CITADEL-branded competing investment and financial services, including login and account registration options for clients, through which clients could directly purchase competing financial services. The Panel also notes that such website stated that the Respondent adhered to the code of conduct of, and was granted a registration number by New Zealand’s Financial Service Providers, which the Complainant shows, was a false and misleading claim. On the date of this decision however, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”.
Having regard to all elements of the case at hand, and in particular to the fact that the disputed domain name is almost identical to the Complainant’s trademark, the initial use of the website linked to the disputed domain name as a platform offering unauthorized CITADEL-branded investment and financial services, and the Respondent’s fraudulent use of a financial services registration number as well as false contact details, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirement of the third element under 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 the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: May 17, 2019
Full & Egal Universal Law Academy