The Complainant is The Citco Group Limited, United Kingdom, represented by Stobbs, United Kingdom.
The Respondent is Alex Kushtapin, Poland. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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 June 9, 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 June 10, 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 June 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2020. The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on August 13, 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 following summary set out the uncontested factual submissions made by the Complainant: 4.1 The Complainant’s business was founded in the Cayman Islands and was established by the Smeets family to meet the needs of multinational and private clients following the Second World War. It started as a civil law notary practice and then went on to establish the Curacao International Trust Company (“CITCO”) focusing on delivering services within the financial and professional services sector. 4.2 Today, after more than 70 years, the Complainant is the parent company of a group of 66 subsidiaries around the world. The Complainant has over 7,000 employees across 60 offices in 45 countries. The total number of assets under administration in the Complainant’s control is equal to USD 1 trillion. 4.3 The Complainant and its subsidiaries provide services including financial advisory, computer software, accountancy, investment and insurance services. The Complainant serves high net worth individuals assisting in the setup of foundations and trusts, multinational corporations, hedge funds and investors all over the world. 4.4 The Complainant owns numerous registrations of the CITCO trademark (and variations thereof) worldwide including the UK and Poland. Most of these registrations are in Classes 35, 36 and 42. It is submitted that the earliest registration of the CITCO trademark was on May 8, 1992, in Aruba. 4.5 The Complainant owns over 280 top-level domain names that comprise the CITCO trademark, including for different jurisdictions and the new delegated generic Top-Level Domains (“gTLDs”). 4.6 The Complainant has a body of previous UDRP decisions relating to domain names comprising of CITCO and variations thereof. These include 4.7 The Complainant advertises and promotes goods and services under the CITCO trademark extensively. These appear in online publications, websites and catalogues. Additionally, the Complainant attends numerous exhibitions and conferences throughout the world. 4.8 The disputed domain name was registered by the Respondent on March 2, 2020, and is linked to an inactive website. 5. Parties’ Contentions A. Complainant 5.1 The Complainant’s contentions may be summarised as follows: (a) The Complainant has built up and owns goodwill and reputation in the CITCO trademark, particularly when used in relation to financial products and services. (b) As a result of the Complainant’s worldwide success and promotional efforts, the CITCO trademark has become uniquely identified with the Complainant in the minds of the consumers. The CITCO trademark is distinctive of the Complainant and its products and services. (c) The disputed domain name comprises the word CITCO in its entirety and is confusingly similar to the CITCO trademark notwithstanding the additional words “Group” and the gTLD “online”, the former being a descriptive term and the latter being an integral and technical part of the disputed domain name. (d) The Respondent has never been known, whether as an individual or a business, by the disputed domain name. (e) The Respondent has no rights or legitimate interests in respect of the disputed domain name. (f) The Respondent is not making legitimate, noncommercial or fair use of the disputed domain name but is instead using it with the sole purpose of commercial gain and to mislead consumers to believe that the disputed domain name is associated with the Complainant’s brand. (g) The disputed domain name has not been used by the Respondent since its registration and thus is being held passively. The passive holding of the disputed domain name indicates bad faith on the part of the Respondent. (h) The Respondent has registered and/or acquired the disputed domain name primarily for the purpose of selling, renting and otherwise transferring the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs. (i) Given that the word CITCO is a coined term and the significant reputation of the Complainant and its CITCO trademark, the Respondent was well aware or would have been aware of the Complainant’s existing rights in the CITCO trademark. (j) The disputed domain name was registered to disrupt the Complainant’s business and/or to prevent the Complainant from registering a domain name in which the Complainant has rights. (k) The Respondent registered the disputed domain name to create a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy: (i) The Respondent’s 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 domain name; and (iii) The Respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the CITCO trademark. The CITCO trademark is registered in various jurisdictions since 1992 and has been extensively used by the Complainant worldwide in relation to financial products and services. The disputed domain name comprises the CITCO trademark in its entirety, with the addition of the descriptive and dictionary term “group”. The Panel agrees that the addition of the descriptive matter does not prevent a finding of confusing similarity under the first element. The Panel also agrees that the applicable gTLD which forms part of the disputed domain name can be disregarded as it is a technical requirement for the registration of domain names. TLDs are generally not considered when determining whether a disputed domain name is identical or confusingly similar to a complainant’s trademark. In the circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s CITCO trademark, in which it has rights. Accordingly, the Panel finds that the Complainant has proven the first element of Paragraph 4(a) of the Policy. B. Rights or Legitimate Interests CITCO is an acronym based on the Complainant’s former business name, Curacao International Trust Company. It does appear to be a coined term and a distinctive trademark. The Respondent’s name is Alex Kushtapin, which is clearly very different from the disputed domain name. The Respondent failed to adduce any evidence to indicate whether the Respondent is known by the disputed domain name nor did the Respondent adduce any evidence to indicate that it was licensed or authorized to use CITCO as part of its disputed domain name. The disputed domain name also resolves to a passive website. No evidence was adduced by the Respondent to prove that the disputed domain name was being used for a legitimate, noncommercial or fair use purpose. In light of the above, the Panel is of the view that the Complainant has successfully established the second element of Paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Based on the evidence adduced by the Complainant to establish its rights to the CITCO trademark, the Panel acknowledges that the trademark has been widely used and promoted on a worldwide basis over a very long duration. This would have generated substantial reputation and goodwill in the trademark. The CITCO trademark is also used in the Complainant’s main domain names as part of its online services. It is highly unlikely, in the present circumstances, that the Respondent was not aware of the Complainant’s trademark when the Respondent sought to register and use the disputed domain name. A basic Google search in respect of the term “CITCO” would have yielded many references to the Complainant and its trademark, something which the Respondent should have done so as suggested by the Panel in Compart AG v. Compart.com / Vertical Axis, Inc.,WIPO Case No. D2009-0462. The fact that the disputed domain name is inactive does not prevent the Panel from concluding that the Respondent is acting in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). There could be many reasons why the Respondent had not activated its website. However, in the absence of evidence to the contrary, the Panel is inclined to accept the Complainant’s contention that the Respondent intended to take advantage of the Complainant’s goodwill and reputation, or had intended to create a likelihood of confusion that the Respondent’s website is affiliated or endorsed by the Complainant. The Panel is also inclined to form a view that the disputed domain name was registered for the purpose of selling the same to the Complainant for valuable consideration in excess of the documented out-of-pocket costs. The Panel is, therefore, of the view that the Complainant has proven the third element of 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, Syed Naqiz Shahabuddin
Sole Panelist
Date: August 27, 2020
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