ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION The Citco Group Limited v. James H Park, JIN-1 Case No. D2023-4838 1. The Parties The Complainant is The Citco Group Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom. The Respondent is James H Park, JIN-1, Republic of Korea. 2. The Domain Name and Registrar The disputed domain name is registered with DropCatch.com LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2023. On November 22, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on November 29, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2023. The Center appointed Daniel Peña as the sole panelist in this matter on January 5, 2024. 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.
page 2 4. Factual Background The Complainant provides services including financial advisory, banking, investment, hedge fund, company software, regulatory and compliance services, and more to its clients around the world. The CITCO mark is derived from its former name “Curacao International Trust Company” and the Complainant has continued to use the CITCO mark since 1948. The Complainant owns and uses the CITCO trademark all over the world. In this case, the Complainant has filed evidence regarding registrations of its trademarks in more than 50 countries, including United States of America trademark number 1729810, registered on November 3, 1992; and International trademark number 766347, registered on March 27, 2001. The disputed domain name was registered on December 18, 2017, and, at the time of filing of the Complaint, resolved to a parked page with pay-per-click (“PPC”) links related to financial services, of the type provided by the Complainant. The parked page also included a link to sell the disputed domain name for USD 20,000. 5. Parties’ Contentions A. Complainant The Complainant submits that the assessment of confusing similarity must be made between “citco bank” and “citco”. In this regard, the Complainant notes that the disputed domain name is clearly confusingly similar to its CITCO trademark in which it has rights since such mark is comprised in full in the disputed domain name. Furthermore, the term “bank” which is contained in the disputed domain name can be associated with the Complainant’s activities, which include actual investments. The Complainant further states that the Respondent has never been known by the disputed domain name. The Complainant further submits that the passive holding of a domain name when no use of the domain is made at any given time since its registration is clear evidence of bad faith. The Complainant further submits that the disputed domain name directs to parked pages with links relating to trust funds, banking, financial advisor for investment provided. The Complainant is also of the opinion that the disputed domain name was registered and is used in bad faith. According to the Complainant, the disputed domain name was registered primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant who is the owner of the CITCO trademark for financial gain. The disputed domain dame is available through Sedo, where the minimum offer for the disputed domain name is USD 20,000. This is evidence in itself that the Respondent only registered the disputed domain name with the sole intention of selling them for out-of-pocket expenses. The Complainant argues that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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
page 3 respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of its rights in the trademarks CITCO on the basis of its multiple trademark registrations. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1. It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the disputed domain name is confusingly similar to a trademark. WIPO Overview 3.0, section 1.7. The Respondent’s incorporation of the Complainant’s CITCO trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s mark. Mere addition of the term “bank” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s CITCO mark because the Complainant’s CITCO mark remains clearly recognizable in the disputed domain name. As noted in WIPO Overview 3.0, 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) does not prevent a finding of confusing similarity under the first element.” Furthermore, the addition of the Generic Top-Level Domain “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent, will lead to this ground being set forth. Refraining from submitting any Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights to or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. Furthermore, the disputed domain name resolves to a parked page with PPC links. The Panel also finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant’s trademarks considering that the additional term “bank” describes the wide range of financial and commercial activities of the Complainant. WIPO Overview 3.0, section 2.5.1. The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
page 4 C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The Complainant has submitted that the Respondent previously registered other domain names that misappropriated the trademarks of well-known brands and businesses. This is further evidence from which to infer the Respondent’s bad faith. See, for example, Luigi Lavazza S.p.A. v. James H Park, JIN-1, WIPO Case No. D2021-1829; International Business Machines Corporation v. James H Park, JIN-1, WIPO Case No. D2020-1427. The Complainant’s well-known trademark is easily found on the Internet through an Internet search engine and the existence of the Complainant’s registered trademarks (both internationally and in a number of countries), together with the significant recognition on the Internet of the brand CITCO, means it is unlikely the Respondent was not aware of the Complainant’s trademark rights when registering the disputed domain name. The use of PPC links to other sites offering goods and services, indicates that the Respondent has likely, for commercial gain, intentionally attempted to attract Internet users to the Respondent’s website to which the disputed domain name resolves. The Respondent has done so by using the Complainant’s trademark CITCO in the disputed domain name to create a likelihood of confusion that the disputed domain name, and website to which the disputed domain name resolves, were sponsored, affiliated, or endorsed by the owner of CITCO trademark (i.e. the Complainant), when clearly they are not. There is very likely a commercial gain in doing so since many parking webpage providers such as Sedo (the parking webpage provider in this case) typically do so on a PPC basis. The Panel considers the amount set forth in the auction platform to be far in excess of the Respondent’s likely out-of-pocket costs directly related to the disputed domain name. In any case, the Respondent has not documented any such costs. Accordingly, the Panel considers that the above circumstances fall within the terms of paragraph 4(b)(i) of the Policy. The Respondent has failed to respond to any of the above. The Panel therefore finds that, within the meaning of the Policy paragraph 4(b)(iv), by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on that website. In such a case, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
page 5 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. /Daniel Peña/ Daniel Peña Sole Panelist Date: January 19, 2024
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