The Complainant is The Citco Group Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Pake Ceo, United States of America 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2020, 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 April 28, 2020 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 29, 2020. 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 May 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2020. The Center appointed Daniel Kraus as the sole panelist in this matter on June 4, 2020. 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 in this proceeding is The Citco Group Limited, a company incorporated under the laws of the Cayman Islands. The Complainant is the parent company of a group of 66 subsidiaries around the world. The Complainant and its subsidiaries provide services including financial advisory, computer software, accountancy, investment and insurance services. The Complainant has over 7,000 employees in 45 countries and manages a total number of assets of USD 1 trillion. The Complainant owns rights in the CITCO trademark in an important number of jurisdictions, covering in particular classes 9, 35, 36, and 42 for financial and advisory products and services. In particular, an International Trademark has been filed in 2001 and extends to a number of countries. The Complainant also owns over 280 domain names which incorporate the CITCO trademark, including various country-code Top-Level Domains (ccTLDs) and generic Top-Level Domains (“gTLDs”). The disputed domain name The Complainant claims that the disputed domain name is confusingly similar to its CITCO mark. The disputed domain name comprises the CITCO mark with the addition a letter “i”, which does not prevent a finding of confusing similarity. The Complainant contends that it has not authorized or permitted the Respondent to use its CITCO mark. The Respondent is not using the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name. The Complainant states that the Respondent’s registration and use of the disputed domain name constitutes bad faith because the Respondent knew of the Complainant’s trademark at the time of the disputed domain name registration. The Complainant contends that the Respondent chose the disputed domain name intending to invoke a misleading association with the Complainant. The Complainant claims that the Respondent has registered and used the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant and/or to benefit in some way from the Complainant’s CITCO mark, or block the Complainant from registering the domain which contains a mark in which it has rights. Furthermore, the Complainant submits that the Respondent has registered the disputed domain name for the purpose of disrupting the business of a competitor. The Respondent registered the disputed domain name, and created an email address associated with the disputed domain name, giving thereby the impression of a legitimate connection between the Respondent and the Complainant (and its subsidiaries). The Complainant contends that the Respondent fraudulently requested large sums of money to its bank account in January 2020 and sent a further email to an investor with regard to the global pandemic of Covid-19 in April 2020. Further, to appear legitimate, the Respondent inserted the Complainant’s company signature at the end of its email to suggest that it was a part of The Citco Group Limited. The purpose of this behaviour was to confuse consumers into assuming that a connection exists between the Respondent and the Complainant, when in fact no such connection exists. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name: (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 Based on the evidence submitted, the Panel finds that the Complainant has rights in the CITCO trademark. The disputed domain name is clearly confusingly similar to the CITCO mark in which the Complainant has shown that it has extensive earlier rights. The disputed domain name simply comprises the Complainant’s CITCO mark in full with the addition of the letter “i”. This additional letter is insignificant, and would go unnoticed by the Internet user. In Celgene Corporation v Privacydotlink,WIPO Case No. D2018-2673, the Panel held that even with an additional letter, the disputed domain name was still confusingly similar to the Complainant’s rights as the Internet user would consider it as being associated with the Complainant. In the present case, even with the addition of the letter “i” the disputed domain name is confusingly similar with the trademarks in which the Complainant has rights. This difference is nothing more than a repetition of the mark’s second letter, which is an obvious misspelling, a practice commonly known as “typosquatting”. Therefore, the Panel does not consider this typographical difference capable of dispelling confusing similarity with the Complainant’s trademark. See The Citco Group Limited v. li linWIPO Case No. D2019-2287; Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; and Vente-privee.com, Vente-privee.com IP S.à.r.l. v. Whois Agent / Gustavo Winchester,WIPO Case No. D2014-0796. The disputed domain name also includes the gTLD “.com”. A gTLD may generally be disregarded in the comparison between a domain name and a trademark for the purposes of the Policy. See LEGO Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations 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; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 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 enable the Respondent to use confusingly similar email addresses in order to attract undue financial profit; this use does not demonstrate any bona fide offering of goods or services by the Respondent. Besides, the Respondent has not filed any Response asserting any rights or legitimate interests. In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The third circumstance reads as follows: “(iii) you have registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor;” The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.” The disputed domain name was registered in 2019, years after the Complainant registered its trademarks. The disputed domain name wholly incorporates the Complainant’s CITCO trademark as its only distinctive element is an obvious misspelling of the domain name used in connection with the Complainant’s official website. The disputed domain name has no apparent meaning other than an approximation of the Complainant’s trademark and domain name. This all gives the Panel reason to find that the Respondent registered the disputed domain name in bad faith. The disputed domain name is used to attract Internet users who misspell the domain name of the Complainant’s official website by creating a likelihood of confusion with the Complainant’s CITCO trademark. As sufficiently shown by the Complainant, the abusive use of a confusing email address to fraudulently solicit funds from the Complainant and its subsidiaries or investors, including with regard to the global pandemic of Covid-19, is intentional and for the commercial gain of the Respondent himself. These facts fall within the circumstance described in paragraph 4(b)(iii) and (iv) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 Daniel Kraus
Sole Panelist
Date: June 17, 2020
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