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and Mediation Center
CIT Group Inc. v. SearchTerms and Modern Limited - Cayman Web Development
Case No. D2005-0921
1. The Parties
The Complainant is CIT Group Inc. of Livingston, New Jersey, United States of America, represented by Pitney Hardin LLP, United States of America.
The Respondents are SearchTerms having a registered address at General Delivery,
Georgetown, Grand Cayman, GT, KY, United Kingdom of Great Britain and Northern
Ireland and Modern Limited - Cayman Web Development, with a P.O. Box in Georgetown,
Grand Cayman, GT, KY, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <citbank.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2005. On August 30, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 2, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondents of the Complaint by email to the contact details of each Respondent and by courier delivery to the registered address of each Respondent. The proceedings commenced on September 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2005.
The Center appointed John Terry as the sole panelist
in this matter on October 5, 2005. 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,
4. Factual Background
The following summary is taken from the Complaint and comprises certified statements, which have not been contested by either Respondent.
(a) CIT Group Inc. was founded as “Commercial Credit and Investment Company” in 1908, in St. Louis, Missouri. In 1915, the company moved its headquarters to New York City, changed its name to Commercial Investment Trust and began using the identifying initials “C.I.T.” In 1924, Commercial Investment Trust became a publicly owned company and its stock was listed on the New York Stock Exchange. The company had 600 employees and assets of US $44.7 million. The company began using the CIT trademark on January 1, 1956 and filed an application to register CIT in the U.S. on August 17, 1973. The registration issued on December 24, 1974 and is prima facie proof of Complainant’s exclusive rights to its CIT Marks in the United States for “business and consumer financing and industrial financing services.”
(b) In 1986, the company officially changed its name to “The CIT Group, Inc.” While continuing its use of the CIT mark, on May 9, 1986 the company also filed applications to register THE CIT GROUP and THE CIT GROUP & Design in the U.S. These registrations issued on July 21, 1987 and August 11, 1987, respectively, and are prima facie proof of Complainant’s exclusive rights to use the marks for “financial services, namely equipment financing, factoring, business credit, sales financing and capital financing.
(c) Through a series of complicated transactions, The CIT Group, Inc. was reorganized as CIT Group, Inc. in 2002. CIT Group Inc. is the successor in interest to all of the assets, including the trademarks, owned by The CIT Group, Inc. for use in commerce.
(d) The company provides a wide range of commercial and consumer financial services, including, but not limited to, the following: asset-based lending; asset management; merchant banking; structured financing; project financing; venture capital funding; rail and aviation financing; equipment financing; sales financing; franchise financing; capital financing; communications, media, and entertainment financing; healthcare financing; construction financing; business credit; factoring; leasing of real estate, construction equipment, telecommunications equipment and office equipment; education lending; and global insurance services.
(e) CIT Bank, a subsidiary of CIT Group Inc., is an Industrial Bank located in Utah that provides a full range of funding and financing products to manufacturers and retailers of consumer goods. This entity was originally named CIT OnLine Bank. On or about July 15, 2002, the name was changed to CIT Bank.
Furthermore the Complaint sets out details of advertising and promotional expenditure on a substantial scale and evidence of the Complainant’s trademark usage which includes the mark CIT the subject of United States Registration 1000360 filed August 17, 1973, in respect of “ business and consumer financing and industrial services in Class 36”. Furthermore particulars are annexed of numerous equivalent registrations and applications in many other countries to the Complaint.
The Complainant also states, based upon information and belief that the two Respondents are “the same entity or are affiliated with one another” and that prior to August 11, 2005 the holder of the present domain name was the second Respondent Modern Limited-Cayman Web Development and subsequent to a letter of demand written by lawyers on behalf of the Complainant dated June 11, 2005. The first Respondent Search Terms became the holder of the domain name in dispute.
The Complaint includes evidence of usage by the Respondents of the domain name in dispute. Such usage has been certified as follows:
(a) The Respondents are using the present domain name through an active website which is used as a targeted search engine to advertise many of the identical financial services that the Complainant offers to consumers. A visitor entering the website “www.citbank.com”, according to investigations of the Complainant, is immediately taken to a targeted search engine website. The website, under the heading “Sponsored Links” are links to many banking-related websites.
(b) The first link is entitled “On-line Banks” and clicking on this link takes the visitor to “www.ingdirect.com”. Accordingly, any visitor looking for a website that might be related to Complainants’ services are readily directed to the “www.ingdirect.com” website. The Complainant’s contend this may bring business to “www.ingdirect.com” instead of the Complainant or cause a visitor to believe that “www.ingdirect.com” is indorsed by, sponsored by, or affiliated with the Complainant.
(c) The second link offered under “Sponsored Links” would take a visitor to “www.security.netbank.com” and this website is devoted to “Deposit Products Promotions” at a business called NetBank.
(d) The third link takes the visitor to “www.us.price-paradise.com” and this website is a portal to various banking, finance and credit related websites and this includes links to many of the Complainants competitor’s websites.
(e) The Complainant contends that visitors are passed
off to competitors of Complainants after visiting the website “www.citbank.com”
and that the Respondents have no business itself operating under the CIT name.
Thus the Respondents are using the present domain name as a means of generating
traffic to a targeted search engine website for the Respondent’s own financial
5. Parties’ Contentions
The Complainant contends that (a) it has established trademark rights by usage and registration of ‘CIT’ which is the characterising component of the present domain name <citbank.com>, (b) that the present domain name is substantially identical or confusingly similar, and (c) the registration and use by either and both of the Respondents has been in bad faith, and neither Respondent has ever had any legitimate rights or interests.
The Respondents did not reply to the Complainant’s
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the present domain name <citbank.com> is at least confusingly similar to the trademark CIT in respect at which the Complainant has satisfied the Panel that it has established and maintained at all material times trademark rights in many countries. It has been well established in prior decisions of various Panels that adding a generic word and also adding the designation “.com” or an equivalent indicator should be disregarded and the comparison made essentially with the characterizing portion of the domain name and the trademark in respect of which rights are established, see for example In L.L Bean, Inc v. ShopStarNetwork, NAF FA95404 (September 14, 2000). Accordingly the first requirement to be established by the Complainant under paragraph 4(a)(i) of the Policy is found to be met.
B. Rights or Legitimate Interests
The Panel is satisfied that no rights or legitimate interests can be identified in respect of either of the Respondents and accepts and relies on the assertion in the certified Complaint that the Respondents do not do any business under any such name as “CIT Bank”. In the absence of any response, the Panel is satisfied that, having regards to the use and reputation demonstrated by the Complainant with respect to the trademark CIT, it is not plausible that the Respondents did not know of this trademark and the reasonable inference is that Respondents adopted the domain name in issue as the domain name for a portal site for financial services. Accordingly the Panel finds there has been no legitimate use by the Respondents and the Complainant has shown that the Respondents have no rights or legitimate intents in respect of the present domain name. Thus the requirements of paragraph 4(a)(ii) of the Policy are established. More particularly, the Respondents have done nothing within paragraph 4(c) of the Policy to demonstrate any rights of legitimate interests.
C. Registered and Used in Bad Faith
On the basis of the factual finds set out in the previous section of this decision, the Panel further finds that the Complainant has established that both the original registration and subsequent use by either Respondent have been in bad faith. There has been no rebuttal filed by the Respondents.
More particularly the Panel finds bad faith because the Respondents use of the present domain name <citbank.com> is an attempt to attract, for commercial gain, internet users to their website or other online location, by creating a likelihood of confusion with the Complainants trademark CIT, such confusion potentially being as to the source, sponsorship, affiliation or endorsement of its website or location of a service on its website. The Complainant’s details of its extensive use and reputation coupled with the absence of a Respondent rebuttal leads the Panel to conclude that the adoption of the present domain name and its subsequent use could not be other than of the nature of intentional activity of a confusing character. The Panel finds that the actions of the Respondents were simply for commercial gain contrary to paragraph 4b(iv), a non-limiting example of conduct deemed to be within the requirement of paragraph 4(a)(iii) of the Policy.
Furthermore there is an uncontested statement on behalf of the Complainants that (a) after dispatch of a cease and desist letter on June 16, 2005 and the filing of the present Complaint the Respondent Modern Limited-Cayman Web Development arranged to change the registered owner to Search Terms and (b) “Search Terms” is a related entity to the first registered owner of the present domain name. In the absence of contrary evidence, the Panel interprets this action as evidence that the Respondents are in some form of collusion and the action of domain name transfer is aimed at seeking to circumvent or make more difficult any complaint under the Policy. The Panel finds such activity a further element of bad faith action contrary to paragraph 4(a)(iii) of the Policy.
Accordingly all the required elements under the policy
have been established by the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <citbank.com> be transferred to the Complainant.
Date: October 27, 2005