The Complainant is The Citco Group Limited, Cayman Islands, Overseas Territory of the United Kingdom, represented by Stobbs, United Kingdom.
The Respondent is Domains By Proxy, LLC, United States of America / Carolina Rodrigues of Fundacion Comercio Electronico, Panama. 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 August 21, 2019. On August 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 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 due to use of a WHOIS privacy service. The Center sent an email communication to the Complainant on August 26, 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 August 29, 2019 that identified the new registrant and contact information disclosed by the Registrar.
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 of the Complaint, and the proceedings commenced on August 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2019.
The Center appointed Clark W. Lackert as the sole panelist in this matter on October 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.
The Complainant has requested that the proceeding be conducted in the English language. The record shows that the language of the registration agreement is English, and use of the English language in this proceeding has not been contested by the Respondent. Accordingly, this decision is being issued in the English language. 4. Factual Background
The Complainant provides a wide range of financial advisory, investment, funding, accounting, and ancillary services under its CITCO trade name and trademark. The Complainant has been using CITCO as an indication of source since at least as early as 1948 when its company was established in the Cayman Islands to serve a multinational and private clientele.
The record shows that the Complainant currently manages over USD 1 trillion worth of client assets and maintains 60 offices in 45 countries around the world. Its services are extensively promoted under its CITCO mark, and it owns and maintains multiple domain names composed solely of its CITCO mark or composed by combining its CITCO mark with descriptive terms that relate to its goods and services such as bank, fund, and securities. In addition, the Complainant has registered its CITCO mark in word, stylized, and design forms in multiple jurisdictions around the world for goods and services in International Classes 9, 35, 36, and 42. Amongst others, the Complainant has trademark rights for CITCO, registration No. 766347, registered on March 27, 2019. These registrations reflect the financial advisory, investment, funding, accounting, and ancillary services promoted by the Complainant under its CITCO marks, and illustrate the global presence and recognition for the Complainant that has been documented through third party recognition, media attention, and industry awards.
The disputed domain name was registered on July 8, 2019. The registrant’s identity was not publicized by WhoIs records but was later disclosed by the Registrar as Carolina Rodrigues, Fundacion Comercio Electronico of Panama who is cited in this decision as a Respondent. The WhoIs and Registrar information indicates that the disputed domain name was registered through Domains By Proxy, LLC, a domain name registration privacy service that is identified as the other Respondent named in this proceeding.
The record shows that the disputed domain name has been used to display links to third party webpages including links composed using the terms “Top Bank List”, “Bank Account Routing Number”, “1st Bank Services”, “Top Private Banks”, “One United Bank”, “Online Mutual Funds”, “Start-Up Business Funding”, “Curacao Online”, “Luxembourg Online”, “Online Banken”, “LU Online”, “ING Bank Online”, and “Services”.
The physical address associated with the disputed domain name does not exist. The courier service utilized by the Center to serve the Respondent Carolina Rodrigues, Fundacion Comercio Electronico, confirmed on September 5, 2019 that the service copy of the Written Notice could not be delivered as addressed. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its CITCO mark because it has been composed by combining CITCO with the terms “Bank” and “Online”, terms that the Complainant maintains are descriptive of the products and services offered under its CITCO mark. Further, the Complainant notes that the terms “Bank” and “Online” are each descriptive or generic, and as such should not be evaluated as distinctive elements of the disputed domain name . The Complainant contends that the disputed domain name’s adoption of the terms “Bank” and “Online” does nothing to disassociate its address from the Complainant’s CITCO brand and therefore the disputed domain name is confusingly similar to the Complainant’s CITCO mark and its domain names that incorporate CITCO.
The Complainant emphasizes its extensive CITCO brand presence and associated reputation that has evolved since it commenced use of CITCO in 1948, and argues that there is no believable or realistic basis for finding that the Respondent’s registration and use of the disputed domain name has been legitimate. The Complainant cites the disputed domain name’s content (i.e., weblinks composed of terms including “Top Bank List”, “Top Private Banks”, “Online Mutual Funds”, “Start-Up Business Funding”,” and the like) as evidence that the Respondent has not been using the disputed domain name in connection with any bona fide offering of goods or services. The Complainant classifies such use as passive holding of a domain name, and emphasizes the lack of evidence that the Respondent has ever been known by or traded under the disputed domain name .
The Complainant alleges that the disputed domain name was registered in bad faith because (i) the Respondent has failed to make good faith use of the disputed domain name; and (ii) there is no evidence that the Respondent was entitled to register the disputed domain name based on legitimate interest or use. The Respondent’s registration of the disputed domain name is classified by the Complaint as an attempt to sell, rent, or otherwise transfer the disputed domain name to the Complainant because the Complainant is the rightful owner of the coined CITCO mark, a mark derived from the initial letters of the Complainant’s former “Curacao International Trust Company” business name. The Complainant proposes that the Respondent has registered the disputed domain name because it either wishes to trade off of the Complainant’s CITCO mark or block the Complainant from acquiring the address as its own domain name. The Complainant emphasizes the disputed domain name’s use of the terms “Bank” and “Online” as further evidence that the disputed domain name was registered with the Complainant in mind due to the Complainant’s use and reputation of its CITCO mark in the finance industry. In addition, the Complainant notes that Internet users, when encountering the disputed domain name, will be likely to assume that it is related to the Complainant and its business.
Regarding bad faith use, the Complainant notes that the disputed domain name’s content consists of pages that are not a genuine site of the Complainant but rather “irrelevant material that has nothing to do with the Complainant”. In addition, the Complainant notes that its extensive use of its CITCO mark for financial services supports a finding the Respondent’s registration and use of the disputed domain name is an attempt to attract users for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement in violation of Paragraph 4(b)(iv) of the Policy. Finally, the Complainant notes that the secondary terms “Bank” and “Online” adopted by the disputed domain name resemble a platform maintained by the Complainant at its website under the heading “Citco Banking Online”, and that this overlap is likely to attract Internet users to the disputed domain name and suggest some affiliation with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel has reviewed the record and finds that the Policy requirements have been satisfied as follows. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has prior rights in its CITCO mark. These rights are based upon the Complainant’s use of CITCO as an indication of source since 1948 and the Complainant’s extensive trademark registrations for CITCO in countries around the world. The Complainant has emphasized that it maintains a global offering of financial goods and services under its CITCO mark, and its portfolio of CITCO registrations reflect this. Specifically, the Complainant has provided evidence of its trademark registrations for CITCO in word, stylized, and design forms for financial goods and services in over 100 jurisdictions that includes extensive protection in Europe, Asia, North America, Africa, the Middle East, Oceania, South America, and the Caribbean. There is no doubt that the Complainant’s rights in its CITCO trademark precede the registration of the July 8, 2019 registration date of the disputed domain name.
The Panel notes that the disputed domain name incorporates the Complainant’s CITCO trademark in its entirety. The use of a distinctive trademark such as CITCO in a disputed domain name supports a finding of confusing similarity. See, e.g., Ameris Bancorp v. WhoisGuard Protected, WhoisGuard, Inc. / King Samson,WIPO Case No. D2018-0844 (concerning the AMERIS trademark and the domain name). See also ROHO, Inc. v. Mark Duane,WIPO Case No. D2001-1168 (holding that use of an existing trademark to compose a domain name satisfies confusing similarity) and Beiersdorf AG v. Richard Trainor, Houghton Richards/ WHOIS Limited,WIPO Case No. D2015-0459 (finding for the complainant on similar grounds).
Regarding the question of whether the additional terms in the disputed domain name, namely “Bank” and “Online”, add distinction, UDRP panels have stated that 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. However, the nature of such additional terms may bear on assessment of the second and third elements (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel notes that evaluation of the “.com” portion of the disputed domain name is not necessary for the assessment under the first element as outlined by Section 1.11 of WIPO Overview 3.0.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
There is no evidence in the record indicating that the Respondent has trademark rights or any other rights to support its adoption of the disputed domain name or that the Respondent has been commonly known by this name or address. The record shows that the disputed domain name’s use has been limited to content promoting links to third party webpages, and this use does not demonstrate any bona fide offering of goods or services by the Respondent.
The Complainant’s rights in its CITCO mark are well-established and precede the registration of the confusingly similar disputed domain name. The Complainant’s arguments and evidence establish a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed domain name, and therefore the burden of production is shifted to the Respondent to provide sufficient evidence demonstrating rights or legitimate interest in accordance with Section 2.1 of WIPO Overview 3.0. The Respondent has not provided any arguments or evidence to counter the Complainant’s contentions and demonstrate rights or legitimate interest, and the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
The composition of the disputed domain name suggests that the Respondent is aware of the Complainant and its financial goods and services. The Respondent has composed the disputed domain name by combining the Complainant’s CITCO mark with the terms “Bank” and “Online”, terms that describe goods and services provided by the Complainant under its trademark such as financial advice, asset investment, software, and software as a service (SAAS) including web based banking platforms. These terms have been routinely dismissed by prior UDRP panels as generic or descriptive, particularly when combined with a trademark associated with financial goods or services such as the Complainant’s. Specifically, panels have categorized the term “bank” in similarly composed domain names as non-distinctive. See, e.g., Carrefour v. He Wen Ming,WIPO Case No. D2018-2539, a case involving a complainant that operated a banking subsidiary and holding that the “bank” portion of was a descriptive term that did “not negate confusing similarity” and cases cited therein. See also AXA SA v. Henk Bierslo,WIPO Case No. D2018-2355, which dismissed the “bank” portion of as “descriptive wording”. Likewise, the term “online” has been similarly dismissed as non-distinctive (see, e.g., Banca Intesa S.p.A. v. Maggie Leonard,WIPO Case No. D2006-0454, holding that the “online” portion of was a term “devoid of any distinctive power” and noting that “Internet users will pay little or no regard as to the term ‘online’ when comparing it to the [c]omplainant’s trademark”). See also Royal Bank of Canada v. N,WIPO Case No. D2004-0642, concerning the domain name and Dow Jones & Co., Inc. v. Dow Jones Update,WIPO Case No. D2000-0495 concerning the domain name . Finally, the Panel notes that decisions involving domain names composed by conjoining the two terms as set forth in the disputed domain name (i.e., “bankonline”) have maintained their descriptive functions and lack of distinction (See, e.g., Credit Industriel et Commercial v. Gloria Weis,WIPO Case No. D2019-1644, concerning and Delta Lloyd N.V. v. Justin DeGrodt,WIPO Case No. DNL2012-0010 concerning ). As such, the composition of the disputed domain name supports a finding that it was registered in bad faith with knowledge of the Complainant’s trademark and business. There is nothing in the record that indicates any good faith objectives to support the Respondent’s adoption of this disputed domain name.
The content of the disputed domain name has featured links that directly relate to the Complainant’s business activities. Specifically, links displayed at the disputed domain name have included “Top Bank List”, “Bank Account Routing Number”, “1st Bank Services”, “Top Private Banks”, “One United Bank”, “Online Mutual Funds”, “Start-Up Business Funding”, “Curacao Online”, “Luxembourg Online”, “Online Banken”, “LU Online”, “ING Bank Online”, and “Services”. This content demonstrates that the Respondent has been using the disputed domain name to trade off of the Complainant’s CITCO mark, a mark that is used by the Complainant to promote its finance, investment, and software goods and services. The Respondent cannot escape a finding of bad faith use by claiming that the above links are auto-generated or coincidental. As noted in Bayerische Motoren Werke AG v. bmwrider llc,WIPO Case No. D2008-0610, it does not matter whether the respondent’s intent is to drive traffic to other websites or attract attention to other products for potential sales; what is important is that the “style of each domain name is found to be sufficient evidence of an intention to attract Internet users by confusion with the Complainant’s trademark”. The record supports the conclusion that use of the disputed domain name to promote content that overlaps with the goods and services provided by the Complainant under its CITCO mark is designed to attract Internet users to the Respondent’s website by falsely suggesting a sponsorship or affiliation with the Complainant in violation of paragraph 4(b)(iv) of the Policy.
The Panel notes that the Respondent used a privacy service to register the disputed domain name, and that this supports an inference of bad faith when considered in connection with the other evidence of bad faith detailed above. See Section 3.6 of WIPO Overview 3.0. The record also shows that the contact information furnished to the Registrar by the Respondent was false, as the Written Notice was undeliverable. The provision of such false contact information is a further indication of bad faith on the part of the Respondent. Id; see also Weber-Stephen Products LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Daniela Gebauer, Kitchenhelpers GmbH,WIPO Case No. D2017-0118 (citing similar circumstances in support of a finding of bad faith) and Banco Original do Agronegócio S.A. v. Private Registration,WIPO Case No. D2013-2037 and decisions cited therein.
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Clark W. Lackert
Sole Panelist
Date: October 15, 2019
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