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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Citco Group Limited v. Contact Privacy / “.”

Case No. D2020-0941

1. The Parties

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

The Respondent is Contact Privacy, Canada / “.”, United States of America (“United States”).

2. The Domain Names and Registrars

The disputed domain names <cictco.com>, <ciftco.com>, <citfco.com> (the “Disputed Domain Names”) are registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2020 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 April 21, 2020. In response to a clarification request by the Center, the Complainant filed an amendment to the Complaint on April 30, 2020.

The Center verified that the Complaint together with the amendment to the Complaint and 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 May 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2020.

The Center appointed John Swinson as the sole panelist in this matter on June 15, 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 the Citco Group Limited, a company incorporated under the laws of the Cayman Islands. The Complainant and its subsidiaries provide various services including financial advisory, computer software, accountancy, investment and insurance services. The Complainant has various locations around the world. According to the Complaint, the Complainant has been operating under the brand CITCO since 1948, and has had a significant commercial presence all over the world for over 70 years.

The Complainant is the owner of a large number of registered trade marks for CITCO (“the Trade Mark”), including United States registered trade mark number 1729810, registered on November 3, 1992. The Complainant also owns hundreds of domain names incorporating the Trade Mark, including <citco.com>, registered on March 28, 1996.

According to the WhoIs search, the Respondent is “.”, based in the United States. No Response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Names were registered on April 7, 2020. As at the date of the Complaint and the date of this decision, the Disputed Domain Names do not resolve to active websites.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Complainant has a strong international presence, and has built an extensive reputation and goodwill in the Trade Mark through extensive use in relation to financial and advisory services. The Complainant owns very extensive rights in the Trade Mark, as evidenced by numerous trade mark applications and registrations worldwide.

The Complainant’s Trade Mark stands for Curacao International Trust Company (“CITCO”). The Trade Mark has been in continuous use since 1948 all over the world. The Complainant owns over 280 top-level domain names incorporating the Trade Mark. The Trade Mark is highly distinctive of the Complainant’s financial products and services and is uniquely identified with the Complainant.

The Disputed Domain Names are clearly confusingly similar to the Trade Mark. The generic Top-Level Domain (“gTLD”) is to be disregarded. The Disputed Domain Names comprise of the Complainant’s Trade Mark in full with the addition of the letters “F”, “T” or “C”. These are insignificant and would go unnoticed, and do not disassociate the Disputed Domain Names from the Complainant or the Complainant’s brand.

Rights or Legitimate Interests

To the best of the Complainant’s knowledge, the Respondent has never been known by the Disputed Domain Names. The Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services. The Disputed Domain Names do not resolve to active websites.

The Respondent has no rights or legitimate interests. The Respondent’s sole purpose is commercial gain and to mislead consumers to believe that the Disputed Domain Names are associated with the Complainant’s brand. It is not possible for the Respondent to claim to have been unaware of the Trade Mark. The Complainant has not given the Respondent permission to use the Trade Mark, including in the Disputed Domain Names.

Registered and Used in Bad Faith

The Respondent’s bad faith registration is shown by the Respondent’s failure to make good faith use of the Disputed Domain Names.

The Respondent has registered and/or acquired the Disputed Domain Names primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Names to the Complainant, who is the owner of the trade mark, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Names. The Trade Mark is a coined term. There is no reason for the Respondent to register the Disputed Domain Names except to refer to the Complainant, benefit in some way, or block the Complainant from registering the Disputed Domain Names.

The Respondent has also registered the Disputed Domain Names for the purpose of disrupting the business of a competitor. The Respondent is clearly capitalising on the fact that Internet users will visit the Disputed Domain Names on the assumption that it will take them to a genuine Citco website.

The Complainant has reason to believe the Disputed Domain Names were registered by the same party. The Respondent created email addresses in order to give the impression of a legitimate connection between the Respondent and the Complainant (and its subsidiaries). Using a “ciftco” or “cictco” email address, the Respondent has fraudulently requested large sums of money to its bank account from the Complainant’s customers and also sent an email regarding the pandemic to an investor. To appear legitimate, the Respondent is using the Complainant’s company signature. The Complainant believes the Respondent is the same for all Disputed Domain Names. The Disputed Domain Names have been registered to create a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation of endorsement of the Respondent’s website.

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 enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response.

A. Procedural Issues

Consolidation

This Complaint is in relation to three domain names. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

In this case, the Disputed Domain Names are owned by the same Respondent and all relate to trade marks owned by the Complainant. Accordingly, this Panel concludes that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondent is consistent with the Policy and Rules.

No Response

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a Response.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.

The Disputed Domain Names incorporate the entirety of the Trade Mark, with the addition of the letters “F”, “T” or “C” interspersed throughout – CITFCO, CIFTCO and CICTCO. The gTLD “.com” can be disregarded under this element (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel considers that the Disputed Domain Names are clear cases of typosquatting. It is well established that “typosquatting” can constitute confusing similarity (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, DaimlerChrysler Corporation v. Worshipping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272 and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201).

The Disputed Domain Names are confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:

- The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Names in connection with a bona fide offering of goods or services. The Disputed Domain Names do not resolve to active websites. There is no evidence that the websites at the Disputed Domain Names have ever been used in connection with a bona fide offering of goods or services.

- The Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Names.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names, or has registered or common law trade mark rights in relation to the Disputed Domain Names.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The Disputed Domain Names do not resolve to active websites.

- As previous panels have found, typosquatting does not constitute a legitimate use of the Disputed Domain Name (see, e.g., Edmunds.com, Inc. v. Yingkun Guo, dba This domain is 4 sale, WIPO Case No. D2006-0694; Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537.

Furthermore, the Complainant has provided evidence that the Respondent has used at least two of the Disputed Domain Names in emails to impersonate the Complainant, both in an attempt to fraudulently persuade the Complainant’s customers to pay large sums of money to the Respondent. The Respondent used the Complainant’s email signatures to appear legitimate. Panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see section 2.13 of WIPO Overview 3.0).

The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

The Complainant has been operating for over 70 years in numerous countries worldwide. The Complainant has a significant trade mark and domain name portfolio, and has provided evidence of its substantial reputation worldwide. The Disputed Domain Names were registered many decades after the Complainant first acquired registered trade mark rights. On the undisputed evidence before the Panel, the Trade Mark and the Complainant are widely known.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of WIPO Overview 3.0). Given the reputation of the Complainant in the Trade Mark, that the Disputed Domain Names are misspellings of the Trade Mark, and that the Trade Mark is a coined term, the Panel finds it inconceivable that the Respondent was not aware of the Trade Mark at the time of registering the Disputed Domain Names. The Panel is satisfied that the Respondent registered the Disputed Domain Names with the Complainant in mind, and the Panel finds that the Disputed Domain Names were registered in bad faith.

The Complainant has provided evidence that the email addresses associated with two of the Disputed Domain Names are being used to impersonate the Complainant. In one case, the Respondent fraudulently requested money off the Complainant’s customer. In another case, the Respondent impersonated the Complainant and asked the Complainant’s customer to redirect payments to an escrow bank account. The use of a domain name for such illegitimate activities is manifestly considered evidence of bad faith (see section 3.1.4 and 3.4 of WIPO Overview 3.0). Given the timing of the registrations and that the Respondent is the registrant of all three Disputed Domain Name, the Panel is prepared to infer that the third Disputed Domain Name is also being used for illegitimate purposes.

Even if the third Disputed Domain Name has not been used, non-use of a domain name does not prevent a finding of bad faith (see section 3.3 of WIPO Overview 3.0). In this case, the following factors also support a finding of use in bad faith:

- The Trade Mark is highly distinctive and well-known.
- The Respondent has not submitted a response or provided any evidence of actual or contemplated good-faith use.
- Given the high likelihood of consumer confusion, the Panel considers that there is no plausible good faith use to which the Disputed Domain Name could be put.

The Respondent has also used a privacy service when registering the Disputed Domain Names, and then further masked his or her true identity by using “.” as the registrant name. This supports a finding of bad faith (see section 3.6 of WIPO Overview 3.0).

In light of the above, and in the absence of a response and any evidence rebutting bad faith registration and use, the Complainant succeeds on the third element 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 <cictco.com>, <ciftco.com>, <citfco.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: June 26, 2020

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