WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Citco Group Limited v. WhoisGuard Protection, WhoisGuard Inc. / Jason Sallman

Case No. D2020-1129

1. The Parties

The Complainant is The Citco Group Limited, Cayman Islands, United Kingdom, represented by Stobbs IP Limited, United Kingdom.

The Respondent is WhoisGuard Protection, WhoisGuard Inc., Panama / Jason Sallman, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <citcoinvestment.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2020. On May 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 May 8, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

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 May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent submitted informal communications on May 8, 2020, and June 17, 2020. The Respondent did not submit any substantial response. The Commencement of Panel Appointment was sent on June 17, 2020.

The Center appointed Theda König Horowicz as the sole panelist in this matter on June 23, 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 is incorporated under the laws of the Cayman Islands and is the parent company of a group of several subsidiaries around the world. The Citco Group provide services including financial advisory, computer software, accountancy, investment and insurance services. Those services are provided to foundations, trusts, multinational corporations, hedge funds and investors all over the world.

The Complainant owns rights in the CITCO trademark and has used it for decades. The name CITCO actually stands for “Curacao International Trust Company” which was the former name of the Complainant. The Complainant notably owns the following registrations for CITCO:

- Cayman Island Registration No. 2019725, in int. cl. 36, registered on May 4, 1995;

- Nigerian Registration No. 8176, in int. cl. 36, registered on August 19, 2015; and,

- International Registration No. 766347, in int. cl. 35, 36, and 42, registered on March 27, 2001.

The Complainant also owns several domain names to promote its business and services including <citco.com> which was registered on March 28, 1996. The CITCO trademark and activities are also promoted through advertisements and reports.

The disputed domain name was registered on April 10, 2020, which was linked to a webpage using the Complainant’s logo and images of the Complainant’s employees.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the assessment of confusing similarity must be made between “citco investment” 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 “investment” 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 disputed domain name directs to a website on which homepage there is a use of the Complainant’s logo and of the Complainant’s employees. The disputed domain name is thus used in the sole purpose of commercial gain and to mislead consumers to believe that the disputed domain name is associated with the Complainant’s brand.

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. Furthermore, the registration of the disputed domain name was made to block the Complainant from registering it particularly since it refers to the Complainant’s field of business. The disputed domain name also suggests that there is a connection to the Complainant due to its high-profile reputation within the finance industry; indeed, the website linked to the disputed domain name uses the Complainant’s trademark and logo. The disputed domain name was also registered for the purpose of disrupting the business of a competitor. Considering the reputation of the Complainant’s CITCO trademark, the Respondent would have been well aware of the Complainant’s intellectual property rights and the registration of the disputed domain name can thus not be coincidental.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. On May 8, 2020, the Center received an email from the Respondent indicating its willingness to sell the disputed domain name.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 1 of the UDRP Rules defines a respondent as “the holder of a domain name registration against which a complaint is initiated”. Here, the Complaint was filed against “WhoisGuard Protection, WhoisGuard Inc.”, a privacy service found in the publicly available WhoIs details for the disputed domain name. On May 8, 2020, the Complainant was provided registrant and contact information disclosed by the Registrar, naming “Jason Sallman” as the registrant of the disputed domain name, and invited to submit an amendment to the Complaint. The Complainant did not amend the Complaint to include this information, however, on the evidence before the Panel, and pursuant to the Rules, paragraph 10(a), the Panel finds that the Respondent has employed a privacy service and shall be recorded as “WhoisGuard Protection, WhoisGuard Inc. / Jason Sallman”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4.5.

A. Identical or Confusingly Similar

The Complainant showed that it has trademark rights in CITCO through several registrations designating many countries, including Nigeria where the Respondent is based.

According to the WIPO Overview 3.0 , section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the first element.

The disputed domain name comprises the Complainant’s trademark in its entirety. The mere addition in the disputed domain name of the dictionary term “investment” does not prevent a finding of confusing similarity with the Complainant’s trademark. See WIPO Overview 3.0, section 1.8.

Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

Paragraph 4 (c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(i) the use of the domain name in connection with a bona fide offering of goods or services;

(ii) being commonly known by the domain name; or

(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Once the Complainant establishes a prima facie case against the Respondent, the burden of production shifts to the Respondent to rebut it.

The Complainant states that the Respondent has never been known by the disputed domain name and that the disputed domain name resolves to a website on which homepage there is a use of the Complainant’s logo and of the Complainant’s employees.

The Panel finds that such use cannot be considered as a bona fide offering of goods and services. It is actually an indication that the Respondent tries to make Internet users believe that they are on an official website of the Complainant for obvious financial gain purposes.

Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifted to the Respondent.

The Respondent has chosen not to reply.

No evidence has been submitted by the Complainant which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent has been commonly known by the disputed domain name or that there is any evidence showing a bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name.

Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has shown that its CITCO trademark is registered and is widely used worldwide by the Complainant for financial services.

Consequently, the Panel agrees with the Complainant that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name (see WIPO Overview 3.0, section 3.2.2).

The disputed domain name was linked to a website on which the trademark and logo of the Complainant appears, in order to attract the Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant. Internet users might be mislead into believing that the website linked to the disputed domain name was an official website of the Complainant.

The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is a further indication of bad faith.

In addition, the Respondent registered the disputed domain name through a privacy service, which while not evidence of bad faith per se, in the context of this case, noting the use of false or incomplete contact details to register the disputed domain name, is an indication that the Respondent wanted to hide its identity and use the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.6).

In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case 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 disputed domain name <citcoinvestment.com> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist
Date: July 8, 2020