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August 13, 2010 / Nate Harris

CIT Group Inc. v. Don Del

Summary of CIT Group Inc. v. Don Del (WIPO Case No. D2010-0522)
Filed April 6, 2010; Decided July 16, 2010 (Panelist: Derek M. Minus)

Domain Name: <citonlineservices.com>

The Parties

Complainant CIT Group has a “long history of operations in the financial industry.” Founded in 2008, it is listed in in the S&P 500 and the Fortune 500, and has over a million customers in 50 countries. CIT Group is the owner of at least seven U.S. Trademark registrations (mostly for the mark “CIT” with various designs), and owns registrations and pending applications in several other countries. CIT Group’s main website is at <cit.com>, which can also be accessed by a redirect from <citonline.com>.

Repondent Don Del (a guy from Toronto) failed to respond to the complaint. On July 30, 2009, Mr. Del registered <citonlineservices.com>. Though Mr. Del was not affiliated with or licensed by CIT, his site advertised financial services, referred to a “CIT bank”, and even included the street address of a CIT Group branch location.

Discussion

When, as here, the Respondent doesn’t respond, the Panel decides the case on the basis of the Complainant’s submissions and “shall draw such inferences [from the failure to respond] as it considers appropriate.” UDRP Rule 14(b).

Under paragraph 4(a) of the UDRP Policy, the Complainant is required to prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 name; and

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

Identity or Confusing Similarity

The domain at issue here consists of CIT Group’s mark “CIT”, the words “online” and services”, and the gTLD (generic top level domain) “.com”. Previous decisions have found confusing similarity where the disputed domain name is [complainant’s trademark ].com. See Sanofi-Aventis v. The Counsel Group, LLC (WIPO Case No. D2005-0650). The addition of a generic or “common” word such as “online” will not avoid a finding of confusing similarity. See Myer Stores Limited v. Mr. David John Singh (WIPO Case No. D2001-0763) (addition of word “online”); Allianz AG v. Marian Dinu (WIPO Case No. D2006-0318) (addition of generic word “Europe”); PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor (WIPO Case No. D2003-0174) (addition of common words including “sports”, “basketball”, “soccer”, etc.).

The domain <citonline.com> was therefore found to be confusingly similar to Complainant’s mark.

Rights or Legitimate Interests

The Panel found that the Respondent had no rights or legitimate interest in the domain name. Respondent never used the domain name as a business name, and was not making a legitimate noncommercial or fair use of the domain name. Furthermore,  intentionally trading on the fame of another (in this case, by implying an affiliation with CIT Group ) can never be a bona fide offering of goods or services that could constitute a right or legitimate interest. Madonna Ciccone, p/k/a Madonna v. Dan Parisi (WIPO Case No. D2000-0847).

Thus, Respondent has no rights or legitimate interests in the mark.

Registered and Used in Bad Faith

One cannot claim innocent registration of a domain name that includes an internationally-famous or well-known mark. See Heineken Brouwerijen B.V. v. Mark Lott (WIPO Case No. D2000-1487) (domain name incorporated internationally famous mark); Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055 (domain name incorporated well-known mark). Here, CIT Group’s mark was “in global use.” [Isn’t that different than international fame?] Therefore, Respondent cannot claim a legitimate or bona fide use. As the Panel puts it, “Respondent has sought to cloak itself with the identity of the Complainant to give credibility to its activities.” Therefore, it acted in bad faith.

Decision

The Panel ordered the domain name be transferred to the Complainant.


Commentary

The Panel quotes Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. (WIPO Case No. D2000-1525) for the rule that “when a domain name wholly incorporates a complainant’s registered trade mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.” That’s a pretty broad statement.  Starwood Hotels owns U.S. Trademark Registration No. 2,289,607 for the standard character mark “W” for hotel-related services. Wouldn’t every domain incorporating the letter “W” be confusingly similar to that mark under this rule? At least there’s some consolation in the fact that “w” is the fourth-least-frequent letter in the English language.

Epilogue

8/13/2010: citonlineservices.com points to page listing a bunch of sponsored links, none of which appear to be related to financial services. It also has a notice saying “This domain name expired on Jul 29 2010 10:39PM.”

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