The CIT Group, Inc. v. Equipment Search.Com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The CIT Group, Inc. v. Equipment Search.Com

Case No. D2001-0596

1. The Parties

The Complainant: The CIT Group, Inc., 650 CIT Drive, Livingston, NJ 07039,

United States of America.

The Respondent: Equipment Search.Com, 117 Steel Street, Barrie, Ontario L4M2G3,

Canada. The Administrative and Billing Contact for the domain names is David

Purdy, Turn Key Web Solutions.com (of the same address).

2. The Domain Names and Registrar

The domain names in issue are<thecitgroup.com>, <citgroupfunding.com>,

<citgroupfinance.com>, <citgroupfinancing.com> (hereafter "the

domain names").

The domain names were registered with Network Solutions, Inc., 505 Huntmar

Park Drive, Herndon, VA 20170, United States of America.

3. Procedural History

(1) The Complaint in Case No. D2001-0596 was filed in email and hardcopy form

on April 25, 2001. Prior to notification of the Complaint to the Respondent,

on April 27, 2001, the Complainant amended its Complaint, since the initial

Complaint did not comply with the requirements for mutual jurisdiction in the

Uniform Dispute Resolution Policy. The Amended Complaint stands as the Complaint

in this proceeding.

(2) An email document from the Respondent addressing issues in the Complaint

was filed with the Center on May 9, 2001;

(3) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules

and Supplemental Rules for Uniform Domain Name Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- No formal Response was filed;

- The Respondent was appropriately notified of default;

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(4) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality

and Independence.

(5) There have been neither further submissions nor communications from the

Complainants and Respondent, or their representatives, after the appointment

of the Panel.

(6) No extensions have been granted or orders issued in advance of this decision.

(7) The expected date of decision in this proceeding is: July 22, 2001.

(8) The language of the proceedings is English.

4. Factual Background

A. The Complainant and its marks

The Complainant is a financial services company, based and operating in the

US, and operating in a number of European countries. Its business involves asset-based

financing, including financing of equipment.

The Complainant is the registered owner of service mark registrations for "THE

CIT GROUP" and "CIT" on the Principal Register of the United

States Patent and Trademark Office under Registration Nos. 1,448,848, 1,452,503

and 1,000,360. The Complainant is also the owner of trademark registrations

(in class 36) for "CIT" in Denmark, Iceland and Norway.

B. The Respondent

The Respondent has not filed a Response. According to Network Solutions, Inc.’s

("NSI") Whois database, the Respondent in this administrative proceeding

is Equipment Search.Com, of the above address. The Administrative and Billing

Contact is David Purdy, Turn Key Web Solutions.com, of the same address. The

Technical Contact is Michael Richards, Apollo Software, 3 Riverview Drive, Wolfville

NS, B0P 1X0, Canada. No other information is known about the Respondent.

C. The Domain Names

The domain names all initially resolved to a website at <www.equipmentsearch.com>,

where the Respondent offers a marketplace for the sale and purchase of various

types of equipment and machinery. At this site the Respondent also provides

application forms and information relating to equipment financing. Subsequently

the domain names resolved to a website for "Children In Trouble",

as detailed in section 5.A below.

5. Parties’ Contentions

A. The Complainant’s assertions

The Complainant submits that the Respondent's domain names are identical or

confusingly similar to the Complainant’s marks for the following reasons:

- One of the domain names, <thecitgroup.com>, is identical both to the

Complainant’s mark "THE CIT GROUP" and to its trade name. The Respondent

formed the other three domain names by adding the words "funding",

"finance" and "financing" to the end of "THE CIT GROUP",

which describe the very services in connection with which the Complainant uses

its marks and trade name. This clearly demonstrates the Respondent’s bad faith.

The Respondent purposefully targeted The CIT Group and its marks as the basis

for creating the domain names so that the Respondent could illicitly trade off

of The CIT Group’s goodwill to divert The CIT Group’s actual and prospective

customers to the Respondent’s own Web site, which could also be found at <www.equipmentsearch.com>.

Moreover, The CIT Group provides, inter alia, equipment financing in

connection with its marks. The Respondent EquipmentSearch.Com purports to be

involved in the same business. This exacerbates the confusion caused by the

Respondent’s registration of the domain names.

The Complainant submits that the Respondent has no legitimate interest or rights

in the domain names, and registered the domain names and is using them in bad

faith, for the following reasons:

- The Respondent used the domain names to connect to the Respondent’s own Web

site, which contained links to several competitors of The CIT Group, including

Actrade Capital, Inc., Alliance Financing Group Inc., Atel Capital Group, Bidpath

Corporation, Deutsche Financial Services, Financial Transport Inc., GE Asset

Services & Training, Janus Mortgage, Inc. and The Associates.

- On February 1, 2001, The CIT Group sent a letter to the Respondent explaining

that The CIT Group is the owner of federally registered service marks with "The

CIT Group", and that The CIT Group’s use of the marks is long-standing.

That letter also requested that, in an effort to resolve the dispute amicably

and without further delay or expense, the Respondent transfer the domain names

to The CIT Group. Shortly after The CIT Group’s February 1, 2001, letter was

sent, the Respondent concocted a "Children In Trouble" Web site, and

arranged for the domain names to point to this new web site. This is apparently

a specious attempt by the Respondent to manufacture a "legitimate"

use of the domain names, but it is pure chicanery. Respondent manufactured the

"Children In Trouble" web solely in response to receiving Complainant’s

protest letter, and only in a weak attempt to belatedly obscure its own bad

faith in registering and using the domain names, into which it has wrongfully

incorporated not only The CIT Group’s valuable and long-standing marks themselves,

but also descriptions of their fields of use. Respondent’s feeble attempt to

hide its wrongdoing in no way explains why it attaches financial services terminology,

including "CIT Group Finance", "CIT Group Financing" and

"CIT Group Funding", to any name relating to a "Children in Trouble"

Web site.

- On February 14, 2001, Respondent sent an e-mail to The CIT Group in which

Respondent made an unsolicited offer to sell the domain names to The CIT Group:

"If your firm wishes to purchase the domain names that I currently own,

then please make me an offer for the outright purchase. If you are not in a

position to do this at this time, then I respectfully declined your request

to sign off and turn over." This further confirms the Respondent’s bad

faith in registering the domain names.

- Additional evidence of the Respondent’s bad faith is readily found in NSI’s

Whois database. The Respondent has registered at least 145 domain names with

NSI, many of which incorporate well-known trademarks and service marks that

do not belong to the Respondent, and in which the Respondent has no legitimate

interest whatsoever. The Respondent’s registrations include <volvotruckstoronto.com>

and <macktrucksofcharlotte.com>. These domain names are obviously based

on famous trademarks and service marks owned by others. VOLVO and numerous related

marks containing the term "VOLVO" are owned by the AB Volvo (Publ)

Corporation in Hisingen Goteborg, Sweden. For example, "VOLVO" is

on the Principal Register as, inter alia, U.S. Reg. No. 0636129, for

automobiles and trucktractors and parts thereof, the business in which Respondent

appears to participate. "MACK" and numerous related marks containing

the term "MACK" are owned by Mack Truck Inc., 2100 Mack Boulevard,

Allentown, Pennsylvania 18105. "MACK" is on the Principal Register

as, inter alia, U.S. Reg. No. 0946042, for financing of purchases of

trucks and arranging for insurance coverage in connection with such financing.

These are but two of many examples of domain names registered by the Respondent

that are identical or confusingly similar to trademarks and service marks owned

by others. This pattern of registering domain names that incorporate well-known

trademarks and service marks belonging to others shows an extensive pattern

of bad faith. Indeed, the Respondent’s bad faith in the field of equipment financing

extends beyond the marks of the Complainant. For example, the Respondent has

registered the domain name <sorisfinancial.com>. Soris Financial is also

an equipment financing company. Like the registration of the domain names, the

Respondent’s registration of <sorisfinancial.com> is no doubt another

attempt to trade off the goodwill of another financial company. It is clear

that the Respondent has registered the domain names in bad faith, and it has

registered at least some of its other 145 domain names "in order to prevent

the owner of the trademark or service mark from reflecting the mark in a corresponding

domain name…." (Policy, § 4(b)(2)).

- The Respondent has also demonstrated its bad faith by using the domain names

to disrupt the business of a competitor and to confuse Internet users. The Respondent’s

original web sites connected to the domain names provided a description of its

alleged business: "We are a world wide network of dealer inventory for

the transportation industry. Pre-approve financing through our financial

centre. Search for new and used trucks, trailers, heavy equipment, agricultural

machinery, industrial equipment and more." (Emphasis added) Not coincidentally,

The CIT Group’s primary business is providing financing for various industries.

Thus, the Respondents’ activities are likely to cause Internet users to believe

that the domain names and their associated web site are connected in some way

with The CIT Group’s business, products or services. Moreover, as discussed

previously, the Respondent’s Web site, before The CIT Group sent its February

1, 2001, letter contained links to several competitors of The CIT Group. Even

though the Respondent altered the web site associated with the domain names

in order to cover up its true intentions after receiving The CIT Group’s February

1, 2001 protest letter, the Respondent’s web site linked to the domain names

reveals that it contains a link to its <equipmentsearch.com> Web site

with the explanation: "Please Visit Our Official Site Sponsor". In

addition, near the link is a copyright notice that reads "Copyright ©

2001 TheCITGroup.com. All Rights Reserved", another deliberate attempt

to confuse users typing in the Domain Names into believing that Respondent is

in some way affiliated with The CIT Group.

- The Respondents’ actions are thus additional evidence of bad

faith as outlined in The Policy, Section 4(b)(iii-iv), which states: (iii) you

have registered the domain name primarily for the purpose of disrupting the

business of a competitor; or (iv) by using the domain name, you have intentionally

attempted to attract, for commercial gain, Internet users to your web site or

other on-line location, by creating a likelihood of confusion with the Complainant's

mark as to the source, sponsorship, affiliation, or endorsement of your web

site or location or of a product or service on your web site or location.

Accordingly the Complainant requests that the Panel order that the domain names

be transferred to the Complainant.

B. The Respondent’s assertions

The Respondent has not filed a Response, however David Purdy of the Respondent

sent an informal email to the Center on May 9, 2001. This email reads, in pertinent

part, as follows:

"In response to this case I wish to simply transfer my rights to these

names. I am giving you my authorization to simply transfer theses to CIT Group.

Sorry for the confusion this has caused I assure you that it was not my direct

intention to have created such an issue…

I trust you will take the necessary steps to ensure that the following domain

names in question below are transferred to them.

Disputed Domain Names:

<thecitgroup.com>

<citgroupfunding.com>

<citgroupfinance.com>

<citgroupfinancing.com>"

6. Discussion and Findings

This case seems redundant: it appears the Respondent wishes to transfer the

domain names to the Complainant. After notification of the Complaint, the Respondent

sent an email to the WIPO Mediation and Arbitration Center, which included the

following sentence:

"In response to this case I wish to simply transfer my rights to these

names. I am giving you my authorization to simply transfer theses to CIT Group."

However, the Respondent has not executed any formal transfer documents for

the domain names, and so it cannot be said that the proceeding is settled. It

is therefore necessary for me to make a decision. Further, I cannot merely cite

the Respondent’s "wishes" and transfer the domain names to the Complainant.

I am bound to decide according to Paragraph 4.a. of the UDRP.

Paragraph 4.a. requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondent’s

domain name is identical or confusingly similar (paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain

name (paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain name in bad faith (paragraph

4.a.(iii)).

Notwithstanding the apparent "settlement", it is incumbent on me

to examine each of these three elements.

A. The Complainant has rights in a trade or service mark, with which Respondent’s

domain name is identical or confusingly similar.

There are two requirements that a Complainant must establish under this paragraph;

that it has rights in a trade or service mark, and that the domain name is identical

or confusingly similar to the marks.

The Complainant has provided the registration documents for its "The CIT

Group" and "CIT" marks. I conclude that the Complainant – as

registered proprietor of the marks – has established the first requirement of

this paragraph; that is, that it has rights in a relevant trademark.

The second requirement is that the domain name be identical or confusingly

similar to the marks. In respect of the first domain name, <thecitgroup.com>,

the domain name is identical to the mark, "The CIT Group". No further

analysis is necessary. In respect of the other three domain names, the Complainant’s

argument carries weight. It argues that the Respondent has merely added the

words "funding", "finance" and "financing" to

the end of "THE CIT GROUP", which describe the services in connection

with which the Complainant uses its marks and trade name. There can be no question

that each of these domain names is confusingly similar to the Complainant’s

marks. Given the nature of the Complainant’s business, any consumer coming across

these domain names will be confused as to the source.

The Complainant has shown that it has rights in trademarks, and that the domain

names are identical or confusingly to these marks. I conclude therefore that

the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interest in respect of the domain

name.

The Complainant asserts that the Respondent has no rights or legitimate interest

in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes

a number of specific arguments on this point, as provided above in section 5.

However these arguments are actually directed to issues on bad faith.

In any event, in the absence of a Response, I consider it necessary to analyse

whether any of the defences provided in Paragraph 4.c. might apply. Paragraph

4.c. of the UDRP provides the following examples to the Respondent:

"(i) before any notice to you of the dispute, your use of, or demonstrable

preparations to use, the domain name or a name corresponding to the domain name

in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue."

There is absolutely no evidence that any of the scenarios of Paragraph 4.c

apply here. Further, there is evidence which specifically negatives any assumption

of legitimate use by the Respondent. The domain names are clearly intended to

trade off the reputation of the Complainant. They resolve to a site which acts

as a competitor of the Complainant. When challenged, the Respondent redirected

the domain names to a clearly-spurious site protecting "Children In Trouble

(CIT)". Since the Respondent provides no evidence of rights or legitimate

interest, this is sufficient in my view to remove any concern that the Respondent

might have rights or legitimate interests in the domain names.

As a result I conclude that, even having considered the possible application

of Paragraph 4.c., the Respondent has no rights or legitimate interest in the

domain name. I conclude that the Complainant has satisfied the requirements

of paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

The final issue is that of bad faith registration and use by the Respondent.

For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive

requirements that the Respondent registered the domain name in bad faith and

continues to use it in bad faith.

There are a number of bases upon which one can clearly find bad faith in this

case. The most obvious basis is paragraph 4.b.(iv). Pursuant to paragraph 4.b.(iv)

where the Respondent has used the domain name in an attempt "to attract,

for commercial gain, Internet users to [the Respondent’s] web site or other

on-line location, by creating a likelihood of confusion of the Complainant’s

mark as to the source, sponsorship, affiliation or endorsement of [respondent’s]

web site or location", bad faith will be established. This has occurred

here. The Respondent used the domain names to connect to the Respondent’s web

site, which contained links to several competitors of The CIT Group, including

Actrade Capital, Inc., Alliance Financing Group Inc., Atel Capital Group, Bidpath

Corporation, Deutsche Financial Services, Financial Transport Inc., GE Asset

Services & Training, Janus Mortgage, Inc. and The Associates. This activity

falls clearly into the exemplar of Paragraph 4.b.(iv), and no further analysis

is necessary.

I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii)

of the UDRP.

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform

Domain Name Dispute Resolution Policy.

Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy

and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy,

the requested remedy is granted.

I hereby order that the domain names <thecitgroup.com>, <citgroupfunding.com>,

<citgroupfinance.com>, <citgroupfinancing.com> be transferred forthwith

to the Complainant.

Dan Hunter

Sole Panelist

Dated: July 19, 2001