WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The CIT Group, Inc. v. Equipment Search.Com

Case No. D2001-0596

 

1. The Parties

The Complainant: The CIT Group, Inc., 650 CIT Drive, Livingston, NJ 07039, United States of America.

The Respondent: Equipment Search.Com, 117 Steel Street, Barrie, Ontario L4M2G3, Canada. The Administrative and Billing Contact for the domain names is David Purdy, Turn Key Web Solutions.com (of the same address).

 

2. The Domain Names and Registrar

The domain names in issue are<thecitgroup.com>, <citgroupfunding.com>, <citgroupfinance.com>, <citgroupfinancing.com> (hereafter "the domain names").

The domain names were registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States of America.

 

3. Procedural History

(1) The Complaint in Case No. D2001-0596 was filed in email and hardcopy form on April 25, 2001. Prior to notification of the Complaint to the Respondent, on April 27, 2001, the Complainant amended its Complaint, since the initial Complaint did not comply with the requirements for mutual jurisdiction in the Uniform Dispute Resolution Policy. The Amended Complaint stands as the Complaint in this proceeding.

(2) An email document from the Respondent addressing issues in the Complaint was filed with the Center on May 9, 2001;

(3) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for Uniform Domain Name Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- No formal Response was filed;

- The Respondent was appropriately notified of default;

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(4) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(5) There have been neither further submissions nor communications from the Complainants and Respondent, or their representatives, after the appointment of the Panel.

(6) No extensions have been granted or orders issued in advance of this decision.

(7) The expected date of decision in this proceeding is: July 22, 2001.

(8) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its marks

The Complainant is a financial services company, based and operating in the US, and operating in a number of European countries. Its business involves asset-based financing, including financing of equipment.

The Complainant is the registered owner of service mark registrations for "THE CIT GROUP" and "CIT" on the Principal Register of the United States Patent and Trademark Office under Registration Nos. 1,448,848, 1,452,503 and 1,000,360. The Complainant is also the owner of trademark registrations (in class 36) for "CIT" in Denmark, Iceland and Norway.

B. The Respondent

The Respondent has not filed a Response. According to Network Solutions, Inc.ís ("NSI") Whois database, the Respondent in this administrative proceeding is Equipment Search.Com, of the above address. The Administrative and Billing Contact is David Purdy, Turn Key Web Solutions.com, of the same address. The Technical Contact is Michael Richards, Apollo Software, 3 Riverview Drive, Wolfville NS, B0P 1X0, Canada. No other information is known about the Respondent.

C. The Domain Names

The domain names all initially resolved to a website at <www.equipmentsearch.com>, where the Respondent offers a marketplace for the sale and purchase of various types of equipment and machinery. At this site the Respondent also provides application forms and information relating to equipment financing. Subsequently the domain names resolved to a website for "Children In Trouble", as detailed in section 5.A below.

 

5. Partiesí Contentions

A. The Complainantís assertions

The Complainant submits that the Respondent's domain names are identical or confusingly similar to the Complainantís marks for the following reasons:

- One of the domain names, <thecitgroup.com>, is identical both to the Complainantís mark "THE CIT GROUP" and to its trade name. The Respondent formed the other three domain names by adding the words "funding", "finance" and "financing" to the end of "THE CIT GROUP", which describe the very services in connection with which the Complainant uses its marks and trade name. This clearly demonstrates the Respondentís bad faith. The Respondent purposefully targeted The CIT Group and its marks as the basis for creating the domain names so that the Respondent could illicitly trade off of The CIT Groupís goodwill to divert The CIT Groupís actual and prospective customers to the Respondentís own Web site, which could also be found at <www.equipmentsearch.com>. Moreover, The CIT Group provides, inter alia, equipment financing in connection with its marks. The Respondent EquipmentSearch.Com purports to be involved in the same business. This exacerbates the confusion caused by the Respondentís registration of the domain names.

The Complainant submits that the Respondent has no legitimate interest or rights in the domain names, and registered the domain names and is using them in bad faith, for the following reasons:

- The Respondent used the domain names to connect to the Respondentís own Web site, which contained links to several competitors of The CIT Group, including Actrade Capital, Inc., Alliance Financing Group Inc., Atel Capital Group, Bidpath Corporation, Deutsche Financial Services, Financial Transport Inc., GE Asset Services & Training, Janus Mortgage, Inc. and The Associates.

- On February 1, 2001, The CIT Group sent a letter to the Respondent explaining that The CIT Group is the owner of federally registered service marks with "The CIT Group", and that The CIT Groupís use of the marks is long-standing. That letter also requested that, in an effort to resolve the dispute amicably and without further delay or expense, the Respondent transfer the domain names to The CIT Group. Shortly after The CIT Groupís February 1, 2001, letter was sent, the Respondent concocted a "Children In Trouble" Web site, and arranged for the domain names to point to this new web site. This is apparently a specious attempt by the Respondent to manufacture a "legitimate" use of the domain names, but it is pure chicanery. Respondent manufactured the "Children In Trouble" web solely in response to receiving Complainantís protest letter, and only in a weak attempt to belatedly obscure its own bad faith in registering and using the domain names, into which it has wrongfully incorporated not only The CIT Groupís valuable and long-standing marks themselves, but also descriptions of their fields of use. Respondentís feeble attempt to hide its wrongdoing in no way explains why it attaches financial services terminology, including "CIT Group Finance", "CIT Group Financing" and "CIT Group Funding", to any name relating to a "Children in Trouble" Web site.

- On February 14, 2001, Respondent sent an e-mail to The CIT Group in which Respondent made an unsolicited offer to sell the domain names to The CIT Group: "If your firm wishes to purchase the domain names that I currently own, then please make me an offer for the outright purchase. If you are not in a position to do this at this time, then I respectfully declined your request to sign off and turn over." This further confirms the Respondentís bad faith in registering the domain names.

- Additional evidence of the Respondentís bad faith is readily found in NSIís Whois database. The Respondent has registered at least 145 domain names with NSI, many of which incorporate well-known trademarks and service marks that do not belong to the Respondent, and in which the Respondent has no legitimate interest whatsoever. The Respondentís registrations include <volvotruckstoronto.com> and <macktrucksofcharlotte.com>. These domain names are obviously based on famous trademarks and service marks owned by others. VOLVO and numerous related marks containing the term "VOLVO" are owned by the AB Volvo (Publ) Corporation in Hisingen Goteborg, Sweden. For example, "VOLVO" is on the Principal Register as, inter alia, U.S. Reg. No. 0636129, for automobiles and trucktractors and parts thereof, the business in which Respondent appears to participate. "MACK" and numerous related marks containing the term "MACK" are owned by Mack Truck Inc., 2100 Mack Boulevard, Allentown, Pennsylvania 18105. "MACK" is on the Principal Register as, inter alia, U.S. Reg. No. 0946042, for financing of purchases of trucks and arranging for insurance coverage in connection with such financing. These are but two of many examples of domain names registered by the Respondent that are identical or confusingly similar to trademarks and service marks owned by others. This pattern of registering domain names that incorporate well-known trademarks and service marks belonging to others shows an extensive pattern of bad faith. Indeed, the Respondentís bad faith in the field of equipment financing extends beyond the marks of the Complainant. For example, the Respondent has registered the domain name <sorisfinancial.com>. Soris Financial is also an equipment financing company. Like the registration of the domain names, the Respondentís registration of <sorisfinancial.com> is no doubt another attempt to trade off the goodwill of another financial company. It is clear that the Respondent has registered the domain names in bad faith, and it has registered at least some of its other 145 domain names "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain nameÖ." (Policy, ß 4(b)(2)).

- The Respondent has also demonstrated its bad faith by using the domain names to disrupt the business of a competitor and to confuse Internet users. The Respondentís original web sites connected to the domain names provided a description of its alleged business: "We are a world wide network of dealer inventory for the transportation industry. Pre-approve financing through our financial centre. Search for new and used trucks, trailers, heavy equipment, agricultural machinery, industrial equipment and more." (Emphasis added) Not coincidentally, The CIT Groupís primary business is providing financing for various industries. Thus, the Respondentsí activities are likely to cause Internet users to believe that the domain names and their associated web site are connected in some way with The CIT Groupís business, products or services. Moreover, as discussed previously, the Respondentís Web site, before The CIT Group sent its February 1, 2001, letter contained links to several competitors of The CIT Group. Even though the Respondent altered the web site associated with the domain names in order to cover up its true intentions after receiving The CIT Groupís February 1, 2001 protest letter, the Respondentís web site linked to the domain names reveals that it contains a link to its <equipmentsearch.com> Web site with the explanation: "Please Visit Our Official Site Sponsor". In addition, near the link is a copyright notice that reads "Copyright © 2001 TheCITGroup.com. All Rights Reserved", another deliberate attempt to confuse users typing in the Domain Names into believing that Respondent is in some way affiliated with The CIT Group.

- The Respondentsí actions are thus additional evidence of bad faith as outlined in The Policy, Section 4(b)(iii-iv), which states: (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.

Accordingly the Complainant requests that the Panel order that the domain names be transferred to the Complainant.

B. The Respondentís assertions

The Respondent has not filed a Response, however David Purdy of the Respondent sent an informal email to the Center on May 9, 2001. This email reads, in pertinent part, as follows:

"In response to this case I wish to simply transfer my rights to these names. I am giving you my authorization to simply transfer theses to CIT Group.

Sorry for the confusion this has caused I assure you that it was not my direct intention to have created such an issueÖ

I trust you will take the necessary steps to ensure that the following domain names in question below are transferred to them.

Disputed Domain Names:

<thecitgroup.com>
<citgroupfunding.com>
<citgroupfinance.com>
<citgroupfinancing.com>"

 

6. Discussion and Findings

This case seems redundant: it appears the Respondent wishes to transfer the domain names to the Complainant. After notification of the Complaint, the Respondent sent an email to the WIPO Mediation and Arbitration Center, which included the following sentence:

"In response to this case I wish to simply transfer my rights to these names. I am giving you my authorization to simply transfer theses to CIT Group."

However, the Respondent has not executed any formal transfer documents for the domain names, and so it cannot be said that the proceeding is settled. It is therefore necessary for me to make a decision. Further, I cannot merely cite the Respondentís "wishes" and transfer the domain names to the Complainant. I am bound to decide according to Paragraph 4.a. of the UDRP.

Paragraph 4.a. requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

Notwithstanding the apparent "settlement", it is incumbent on me to examine each of these three elements.

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainant has provided the registration documents for its "The CIT Group" and "CIT" marks. I conclude that the Complainant Ė as registered proprietor of the marks Ė has established the first requirement of this paragraph; that is, that it has rights in a relevant trademark.

The second requirement is that the domain name be identical or confusingly similar to the marks. In respect of the first domain name, <thecitgroup.com>, the domain name is identical to the mark, "The CIT Group". No further analysis is necessary. In respect of the other three domain names, the Complainantís argument carries weight. It argues that the Respondent has merely added the words "funding", "finance" and "financing" to the end of "THE CIT GROUP", which describe the services in connection with which the Complainant uses its marks and trade name. There can be no question that each of these domain names is confusingly similar to the Complainantís marks. Given the nature of the Complainantís business, any consumer coming across these domain names will be confused as to the source.

The Complainant has shown that it has rights in trademarks, and that the domain names are identical or confusingly to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interest in respect of the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes a number of specific arguments on this point, as provided above in section 5. However these arguments are actually directed to issues on bad faith.

In any event, in the absence of a Response, I consider it necessary to analyse whether any of the defences provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:

"(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."

There is absolutely no evidence that any of the scenarios of Paragraph 4.c apply here. Further, there is evidence which specifically negatives any assumption of legitimate use by the Respondent. The domain names are clearly intended to trade off the reputation of the Complainant. They resolve to a site which acts as a competitor of the Complainant. When challenged, the Respondent redirected the domain names to a clearly-spurious site protecting "Children In Trouble (CIT)". Since the Respondent provides no evidence of rights or legitimate interest, this is sufficient in my view to remove any concern that the Respondent might have rights or legitimate interests in the domain names.

As a result I conclude that, even having considered the possible application of Paragraph 4.c., the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

There are a number of bases upon which one can clearly find bad faith in this case. The most obvious basis is paragraph 4.b.(iv). Pursuant to paragraph 4.b.(iv) where the Respondent has used the domain name in an attempt "to attract, for commercial gain, Internet users to [the Respondentís] web site or other on-line location, by creating a likelihood of confusion of the Complainantís mark as to the source, sponsorship, affiliation or endorsement of [respondentís] web site or location", bad faith will be established. This has occurred here. The Respondent used the domain names to connect to the Respondentís web site, which contained links to several competitors of The CIT Group, including Actrade Capital, Inc., Alliance Financing Group Inc., Atel Capital Group, Bidpath Corporation, Deutsche Financial Services, Financial Transport Inc., GE Asset Services & Training, Janus Mortgage, Inc. and The Associates. This activity falls clearly into the exemplar of Paragraph 4.b.(iv), and no further analysis is necessary.

I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain names <thecitgroup.com>, <citgroupfunding.com>, <citgroupfinance.com>, <citgroupfinancing.com> be transferred forthwith to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: July 19, 2001