The Complainant is Citigroup Inc., United States of America (“United States”), represented by Frankfurt Kurnit Klein & Selz, PC, United States.
The Respondent is WhoisGuard, Inc., Panama / citifxtrust citifxtrust , United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2021. On January 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2021 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 amendment to the Complaint on February 18, 2021. The Center verified that the Complaint together with the amendment to 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 March 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2021. The Center appointed Nicholas Smith as the sole panelist in this matter on April 29, 2021. 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 is a global banking and financial services corporation headquartered in New York City. The Complainant provides a variety of financial services including providing foreign exchange and trading services, which it does under the trade mark CITIFX (“CITIFX Mark”). The Complainant’s CITIFX operation employees 1,400 staff across 83 countries. The Complainant holds a registered trade mark in the United States for the CITIFX Mark (registration number 2465567) for services in class 36, registered on July 3, 2001 and first used in 1991. The Domain Name was registered by the Respondent on November 20, 2021. It is presently used for a website (the “Respondent’s Website”) that purported to offer financial information and investment services in competition with the Complainant under the CITIFX Mark including cryptocurrency investments. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s CITIFX Mark; The Complainant is the owner of the CITIFX Mark, having registered the CITIFX Mark in the United States. The Domain Name is confusingly similar to the CITIFX Mark, merely adding the word “trust” which is descriptive of the services offered by the Complainant to the wholly incorporated CITIFX Mark. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor has the Complainant provided a licence or authorization to register the Domain Name or any domain name incorporating the CITIFX Mark. There is no evidence, since the Respondent registered the Domain Name, of the Respondent’s use of, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial purpose. The Domain Name resolves to a website that offers financial services under the CITIFX Mark in direct competition with the Complainant. This does not provide the Respondent with rights or legitimate interests. The Domain Name was registered and is being used in bad faith. Given the reputation of the Complainant and the use of the Respondent’s Website, the Respondent had knowledge of the CITIFX Mark at the time of registration. Such knowledge is an indication of bad faith registration. The Respondent is using the Domain Name for a website that offers investment services in direct competition with the Complainant. This amounts to bad faith use under paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the CITIFX Mark, having registrations for the CITIFX Mark as a trade mark in the United States. The Domain Name consists of the CITIFX Mark with the addition of the descriptive term “trust” which describes a subset of services offered by the Complainant. The addition of a dictionary term (or terms) to a complainant’s mark is insufficient to dispel the confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s CITIFX Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the CITIFX Mark or a mark similar to the CITIFX Mark. The WhoIs lists “citifxtrust citifxtrust” as registrant of record. However, there is no affirmative evidence that the Respondent is actually commonly known under those names as opposed to simply registering the Domain Name under a pseudonym for the purpose of asserting rights or legitimate interests. Even if a respondent appears from the WhoIs record to be known by the domain name, without additional affirmative evidence, it can be concluded that such a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services. Rather, the use of the confusingly similar Domain Name for a website that, under the Complainant’s CITIFX trade mark, offers investment services in direct competition with the Complainant, does not absent further explanation, amount to use for a bona fide offering of goods and services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (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 the respondent’s website or location. (Policy, paragraph 4(b)). The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the CITIFX Mark at the time the Respondent registered the Domain Name. The Complainant’s CITIFX Mark is well known, having been in use for over 25 years in 83 countries. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register the Domain Name that wholly incorporates the CITIFX Mark and redirect it to the Respondent’s Website, unless there was an awareness of and an intention to create a likelihood of confusion with and the Complainant and its CITIFX Mark. In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith. The Respondent’s Website purports to offer investment services, which if “real” would be services in direct competition with the Complainant, under the same trade mark as the CITIFX Mark used by the Complainant. In these circumstances the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the CITIFX Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such the Panel finds that the Domain Name is being used in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name, Nicholas Smith
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Sole Panelist
Date: May 7, 2021
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