WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Citco Group Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Yuri Diaz, Yuricop
Case No. DCC2019-0014
1. The Parties
The Complainant is The Citco Group Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Yuri Diaz, Yuricop, Germany.
2. The Domain Name and Registrar
The disputed domain name <citco.cc> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On November 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 November 18, 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 19, 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 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2019.
The Center appointed Martin Schwimmer as the sole panelist in this matter on December 16, 2019. 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, the Citco Group Limited, is the parent company of 66 subsidiaries around the world providing various financial services, and is the world’s largest hedge fund administrator. Founded in 1948 as the Curacao Investment Trust, the Complainant owns and uses the CITCO trademark all over the world.
The Respondent registered the disputed domain name on September 4, 2019, which name is used to host a registrar parking page displaying keyword advertisements.
5. Parties’ Contentions
The Complainant and its subsidiaries or affiliates provide financial advisory, computer software, accountancy, investment, insurance, and other services. The name “citco” was derived from the initials of the Complainant’s former name Curacao International Trust Company. The Complainant has obtained multiple trademark registrations, including international trademark registration number 766347 for CITCO, designating multiple jurisdictions, including Germany, registered on March 27, 2001.
The Complainant has also registered over 280 domain names comprising the element “citco” and different Top-Level Domain (“TLD”) suffixes. One of its domain names is <citco.com>, which the Complainant uses in connection with its official website where it provides information about itself and its services.
Through extensive worldwide use and promotion, the CITCO mark has become well known.
The Complainant has not authorized or permitted the Respondent to use its CITCO mark. The Respondent is not using the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name.
The Complainant states that the Respondent’s registration and use of the disputed domain name constitutes bad faith because the Respondent knew of the Complainant’s trademark at the time of the disputed domain name registration. The Complainant contends that the Respondent chose the disputed domain name intending to invoke a misleading association with the Complainant. The Complainant claims that the Respondent has registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered CITCO trademark as to the source, sponsorship, affiliation, or endorsement of its website or its services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns numerous registrations for the CITCO mark, including International Registration 766347, which registration has been extended to numerous jurisdictions including Germany (alleged domicile of the Respondent). Many of the Complainant’s trademarks were obtained prior to the Respondent’s registration of the disputed domain name.
The Complainant has demonstrated use of its mark at its “www.citco.com” website.
The Panel notes that the disputed domain name <citco.cc> incorporates the Complainant’s CITCO trademark in its entirety. The “.cc” portion of the disputed domain name is not necessary for the assessment under the first element as outlined by Section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
There is no evidence in the record indicating that the Respondent has trademark rights or any other rights to support its adoption of the disputed domain name or that the Respondent has been commonly known by this name or address. The record shows that the disputed domain name’s use has been limited to content promoting links to third party webpages, and this use does not demonstrate any bona fide offering of goods or services by the Respondent.
The Respondent has not filed any Response asserting any rights or legitimate interests. Therefore the Panel holds that the Complainant has established an unrebutted, prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel finds that paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
The record contains sufficient evidence of the Complainant’s decades-long use and registration of the CITCO mark, including evidence of the Complainant’s promotion of the mark, to conclude that the CITCO mark is well known.
The Complainant provided a print-out of the Respondent’s website as of the time of the filing of the Complaint, which page can be described as a registrar parking page that displays links to keyword ads, some of which seem to allude to the Complainant (for example, links that refer to Curacao, the original headquarters of the Complainant). At the present, the majority of the links on the parking page refer to “Citgo”, a petroleum company. The aforementioned is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Moreover, if one considers a registrar parking page with links as passive use, it has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious legitimate purpose, will be deemed to be bad faith use pursuant to paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
As an aside, the Panel notes that it was struck by the overall number of typographical, grammatical, formatting, and diction errors in the Complaint. In this instance, the factors relied upon by the Panel in reaching its decision (documentation of the Complainant’s trademark rights, the unrebutted presumption of the absence of bona fide use by the Respondent, and the bad faith use of the domain name), were readily ascertainable from the record, and therefore did not negatively affect the decision. However, there are at least two reasons why the types of errors as found in this Complaint could effect the outcome of a decision, in general, and therefore useful to articulate.
First – a party cannot prevail by merely showing up. A proceeding under the Policy is deceptively simple, because there is no provision under the Policy for a default judgment. Usually, a party must make its prima facie case in only one pleading. Accordingly, imprecise, incomplete, or incorrect information can obscure relevant evidence. In this instance, for example, the Complainant proffered a table of its trademark applications and registrations that, without explanation, left many entries blank. There is no mechanism as of right by which a party can correct or supplement what it intended to show.
Second – careless pleadings can transmit an unintended message. The Panel notes that the errors that were in the original Complaint occurred in the amended Complaint as well. This suggests that urgency to file was not the explanation for the errors, at least not in the amended Complaint. Whatever the reason for the errors, a pervasive inattention to detail in a party’s pleadings may lead a panel to infer, rightly or wrongly, that the party doesn’t view its claim or its defenses is being particularly important, or the prejudice it suffers as being particularly severe. Such an inference may be dispositive in close cases demanding significant discretion on the part of the Panel.
However, as stated herein, fortunately for the Complainant the record here contains sufficient evidence to conclude that the Complainant has made out an unrebutted prima facie case that CITCO is a sufficiently well-known mark such that the Respondent’s use or passive use of such constitutes the bad faith registration and use of the disputed domain name.
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 <citco.cc> be transferred to the Complainant.
Date: December 27, 2019