WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Citadel Enterprise Americas LLC / KCG IP Holdings LLC v. Marcelo Cabral

Case No. D2019-2658

1. The Parties

Complainants are Citadel Enterprise Americas LLC, United States of America (the “United States” or “U.S.”) and KCG IP Holdings LLC (United States) (both referred together to as “Complainant”), represented by Winston & Strawn LLP, United States.

Respondent is Marcelo Cabral, United States.

2. The Domain Names and Registrar

The disputed domain names <citadel-investment-properties.com> and <citadel-inv-prop.com> (the “Disputed Domain Names”) are registered with Automattic Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2019. On October 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 30, 2019, 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 October 31, 2019 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 November 1, 2019.

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 November 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2020. After a suspension request submitted by the Complainant on November 22, 2019, the proceedings were suspended on November 26, 2019. The Complainant requested the proceedings to continue on December 19, 2019. The Response due date was established January 7, 2020. No formal response was filed and the Center notified the Commencement of the Panel Appointment on January 8, 2020.

The Center appointed Martin Schwimmer as the sole panelist in this matter on January 17, 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

Complainant, Citadel Enterprise Americas LLC, acting under license from its co-Complainant, KCG IP Holdings LLC, is a large alternative investment institution providing investment services under the name CITADEL. It is one of the most successful hedge funds in the U.S. Respondent utilized the Disputed Domain Names <citadel-investment-properties.com> and <citadel-inv-prop.com> for a website that provided material in Portuguese purporting to promote real estate investment opportunities offered by a ‘Citadel Investment Properties’ of Greenwich, Connecticut, U.S.

5. Parties’ Contentions

A. Complainant

Complainants request that both entities be allowed to proceed under a single proceeding, as both entities share a specific common grievance. Here, first Complainant utilizes the trademark in question under license from the second Complainant.

Furthermore, proceedings against both Disputed Domain Names should be consolidated into a single dispute. The Registrar confirmed that the same Registrant appears for both of the Disputed Domain Names.

Complainant Citadel Enterprises Americas LLC is a large investment institution founded in 1990 and employing more than 1,250 professionals in offices worldwide. It utilizes the CITADEL mark in connection with investment management and advisory services, and other financial services, under license from co‑Complainant KCG IP Holdings LLC, which owns various registrations for the mark for the mark in various jurisdictions.

Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registration that is confusingly similar to any mark owned by Complainant.

Respondent does not appear to be operating a bona fide or legitimate business under the Disputed Domain Names. The Disputed Domain Names both resolved to a website at <citadel-investment-properties.com> (the “Website”) that claims to offer real estate investment services by Citadel Investment Properties, of Greenwich, Connecticut. The Website is in Portuguese and purports to offer buildings in the U.S. for sale as investment vehicles. The Website contains a form that requests personal information, which supports the possibility that the Website is in fact a phishing scheme.

As the Disputed Domains offer investment services (services for which Complaint is globally known), the Disputed Domain Names falsely suggest an association, affiliation or sponsorship between the Respondent and Complainant. Such a diversionary use does not represent a bona fide offering of goods or services or a legitimate non-commercial fair use.

Respondent’s offer services for which Complainant is known, indicates that Respondent had actual knowledge of Complainant’s rights. Respondent’s use of Complainant’s well-known mark infringing real estate investment services and/or a phishing scheme represents bad faith use and registration of the Disputed Domain Names.

B. Respondent

Respondent did not submit a formal response. It did submit an email to the Center which the Panel views primarily as a settlement offer, not intended to serve as a substantive response to the Complaint. Accordingly, the Panel did not consider the contents of Respondent’s email in reaching its substantive decision. However it does view the Respondent’s email as additional evidence in its decision to consolidate the proceedings (See below).

6. Discussion and Findings

The Panel finds that the two Complainants share a common specific grievance regarding the Disputed Domain Names. As the Registrar has confirmed that the Disputed Domain Names have the same Registrant, the names are under common control. Furthermore, the names are similar to each other, and resolved to the same Website. Finally, as noted above, Respondent, in its email to the Center, did not contest or even acknowledge the proposed consolidation of the disputes. Accordingly, consolidation of both the Complainants and the disputes is appropriate, and would be equitable and procedurally efficient.

A. Identical or Confusingly Similar

The Panel finds that Complainant has provided evidence that it has valid rights in the trademark CITADEL (whether directly or under license from its affiliated company), based on its registration and use of CITADEL as a trademark, commencing many years prior to the 2019 registration of the disputed domain name. It has proffered documentation of its ownership of the CITADEL mark, including U.S. registration no. 3,213,943, registered February 27, 2007; Brazil trademark no. 830073019, registered November 6, 2012, and EUTM no. 002170009, registered August 2, 2002, all for the CITADEL mark in block letters.

Complainant has demonstrated use of the CITADEL mark at its website at “www.citadel.com” and “www.citadelsecurities.com”.

The Disputed Domain Names consist of the combination of Complainant’s CITADEL mark in its entirety, and the addition of “-investment-properties” and “-inv-prop” respectively. The term “investment-properties” relates to the Complainant’s services. The term “inv-pro” can reasonably be understood as an abbreviation for “investment-properties,” taking into account the nature of the Website.

The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.8: “[W]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s trademarks, and the first element required by the Policy is fulfilled.

B. Rights or Legitimate Interests

Complainant has demonstrated that Respondent has no rights or legitimate interests in the Disputed Domain Names. The Panel notes that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademark. There is no evidence that the Respondent was known as or has traded under the CITADEL mark prior to the registration of the Disputed Domain Names.

The Panel notes that the Disputed Domain Names no longer resolve to the Website depicted in the exhibits to the Complaint. The Panel concurs with Complainant’s assertion that in view of Complainant’s strong trademark for the CITADEL mark in the U.S. as well as its registrations for CITADEL that cover two Portuguese speaking jurisdictions, Brazil and Portugal, that Respondent’s use of the Disputed Domain Names and the CITADEL mark for (purportedly) real estate investment services suggests a false association, affiliation, or sponsorship between Respondent and Complainant. Such use does not rise to bona fide use.

The Panel also notes that Respondent’s Website identifies itself as that of Citadel Investment Properties Inc., of Greenwich, Connecticut (where the Complainant does in fact have an office). However, there are missing digits in the listed telephone number, no street address, and no email address. Considered in combination with the existence of the Website’s online form that solicited personal information, there is the possibility that the Website was a phishing site.

Respondent has not attempted to rebut Complainant’s assertions.

The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. The Panel therefore rules that Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

Complainant is one of the most successful investment managers in the United States. It receives a substantial amount of unsolicited press coverage as such. Accordingly, Complainant’s CITADEL trademark is a well-known mark in the financial services field.

Respondent’s Website purported to originate in the United States, and to offer U.S. real estate investment opportunities to a Portuguese-speaking clientele. As noted, in addition to its worldwide reputation, Complainant owns registrations for CITADEL in the two largest Portuguese speaking territories, Portugal and Brazil. Finally, as the Website identified itself as that of Citadel Investment Properties, Inc. of Greenwich, Connecticut, where Complainant maintains an office, the Panel thus concludes that Respondent registered the Disputed Domain Names with actual knowledge of Complainant and its reputation.

The Panel finds that Respondent deliberately chose Complainant’s well-known arbitrary trademark to promote either competitive services, or, more probably, a phishing scheme. In either scenario, the registration and use of the Complainant’s mark was in bad faith, and Complainant has satisfied paragraph 4(b)(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 Names <citadel-investment-properties.com> and <citadel-inv-prop.com> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: January 20, 2020