NATIONAL ARBITRATION FORUM
Citigroup Inc. v. Citibank, N.A.
Claim Number: FA0706001011822
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Citibank, N.A. (“Respondent”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nikkociti.com>, registered with Nameview, Inc.
The undersigned certifies that she has acted independently and impartially, and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“NAF”) electronically on June 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 20, 2007. Complainant, on June 29, 2007, at the request of the NAF, amended the Complaint, as to Respondent’s name and contact information, and as to Complainant’s requested remedy.
On June 26, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <nikkociti.com> domain name is registered with Nameview, Inc. and that the Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on July 3, 2007.
On July 9, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant states that Citigroup was formed on October 8, 1998, following the business combination between two well-known companies, that is, Citicorp and Travelers Group Inc. Since as early as 1959, Citigroup (then through Citicorp and Citibank) has provided a broad range of financial services to consumers and corporate customers worldwide under the CITI Marks. Citigroup has an active presence worldwide, with over 1,700 branches and 5,100 ATM’s in approximately 100 countries.
Citigroup, today, contends that it has more than 100 registrations or applications for the CITI Marks in the United States alone. In addition to the U.S., the CITI Marks are applied for, or registered, in approximately 200 countries throughout the world.
Citigroup states that, among other applications and registrations, the mark CITI, U.S. Reg. No. 1,181,467 (incontestable status), was registered on December 8, 1981 for “financial services including consumer and commercial lending, credit card services, real estate services, investment and advisory services and providing venture capital to others;” and that the mark CITIGROUP, Canadian Reg. No. TMA549,210, was registered on August 2, 2001 for a “full range of investment and financial services, namely: investment advice, brokerage, management, real estate and mutual fund investment services, financial planning, analysis, exchange, management, research, loan and financing services; banking services; credit card services; securities trading, consulting and underwriting services; and insurance services.”
Citigroup contends that it has established rights in these inherently distinctive marks pursuant to Citigroup’s registrations and continuous use of such marks in commerce.
On June 19, 2007, Complainant, Citigroup, filed a Complaint under the Policy against NIKKOCITI.COM c/o Whois Identity Shield (“Registrar’s Customer”) requesting the Panel to transfer the Offending Domain <nikkociti.com> to Complainant.
Complainant contended in its June 19, 2007 Complaint that the Offending Domain <nikkociti.com> is confusingly similar to Complainant’s marks because it fully incorporates Complainant’s marks. Complainant also contended, through information and belief, that the Offending Domain was used solely to divert Internet users searching for Complainant, to Complainant’s competitors for the purpose of receiving click-through fees; and that the Offending Domain was registered and used in bad faith.
Complainant contends that, upon notification to the Registrar by the National Arbitration Forum, that a Complaint had been filed to recover the Offending Domain: that either the Registrar modified the WHOIS record, or allowed Registrar’s Customer to modify the WHOIS records, to reflect Complainant’s affiliate, Citibank, N.A. as the registrant of the Offending Domain, rather than locking down the Offending Domain, as required by their Registrar Agreement with ICANN.
Complainant then complied with NAF’s Deficiency Order, which required the June 19, 2007 Complaint to be amended to reflect Citibank, N.A. as the proper Respondent.
Respondent contends that either the Registrar’s Company, or the Registrar, have stolen the identity of Citibank, N.A, in an attempt to disrupt these proceedings and to make a mockery of the Policy, the Panel and ICANN. As a result, Respondent, an affiliate of Complainant, has been involuntarily placed in the unusual position of being the Respondent of record in this matter, through an illicit change in title to the domain name after a complaint was filed against the original registrant of the domain.
Respondent, therefore, is in complete agreement with the facts and allegations set forth in the Complaint, and urges the Panel to make a speedy decision transferring these domain names to Complainant.
Respondent also requests that the Panel forego the usual UDRP analysis of the three issues set out in the Complaint and simply make an Order for the transfer of the domain name to Complainant, stating that this proposed course was followed in Boehringer Ingelheim Int’l GmbH v. Modern Ltd-Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003), as well as among other decisions.
1. Response constitutes Respondent’s explicit consent to transfer the domain name <nikkociti.com> to Complainant.
2. The Panel has ordered the transfer of the domain name <nikkociti.com> to Complainant, based upon Respondent’s explicit consent, and therefore the Panel will forego the traditional UDRP analysis.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant and Respondent both assert that, after the filing of this Complaint, there was an “illicit change” in the registration record by the registrar, so that now the WHOIS information lists Complainant as the registrant of the <nikkociti.com> domain name, even though Complainant has no control over it. Thus, Respondent is also Complainant in this matter.
“Cyberflying” is a colorful expression which describes the daring practice of Respondent flinging the disputed domain name trapeze back to Complainant; whereby, Complainant assumes the twinned identity of Complainant/Respondent and the original Respondent becomes an illusionist. This practice of changing the registrant of a domain name, before or during a UDRP proceeding, has the circus-like effect of requiring Complainant to respond to its own Complaint. Thus, the actual owner of the disputed domain becomes an illusionist who circumvents the arbitration proceeding, flaunts the UDRP Policy, and escapes detection and labeling as a repeat offender. This Panel rules that the owner of the disputed domain name <nikkociti.com> has engaged in this illicit practice of cyberflying by causing or permitting the disputed domain name to be re-registered to Citibank, N.A.
B. Respondent’s Consent to Transfer
Respondent has provided a Response asserting that, it agrees with Complainant’s allegations and “urges the Panel to make a speedy decision transferring these domain names to Complainant.” Respondent also requests that “the Panel forgo the usual analysis of the three [UDRP Policy] issues set out in the Complaint and simply make an order for the transfer of the domain name [<nikkociti.com>] to the Complainant.”
DISCUSSION and ANALYSIS
Arbiters of the UDRP Policy have established a precedent, in cases where the respondent and the complainant are listed as the self-same entity, of ordering the immediate transfer of the disputed domain name. See KSL Recreation Mgmt. Operations, LLC v. KSL Recreation Mgmt. Operations LLC, FA 876390 (Nat. Arb. Forum Feb. 13, 2007) (transferring the disputed domain name to the complainant where the respondent had engaged in cyberflying by changing the registration information to list the complainant as the registrant of the disputed domain name after notice of the dispute); see also High Point Bank & Trust Co. v. High Point Bank & Trust, FA 632711 (Nat. Arb. Forum Feb. 22, 2006) (finding that the complainant and the respondent were one and the same where the respondent cyberflew the disputed domain name to the complainant, and thus the complainant was entitled to the transfer of the disputed domain name).
Given the parties’ common consent to transfer, as well as the absence of an arbitral mandate to engage in an UDRP analysis, the Panel therefore orders Respondent to transfer the disputed domain name <nikkociti.com> to Complainant, forthwith. See Mattel, Inc. v. Yoon, FA 967843 (Nat. Arb. Forum June 4, 2007) (deciding not to analyze the elements of the Policy where the respondent did not contest the complainant’s remedy for transfer of the disputed domain name); see also Tex. Med. Ctr. v. Spinder, FA 886496 (Nat. Arb. Forum Feb. 19, 2007) (foregoing the traditional Policy analysis where the respondent stipulated to the transfer of the disputed domain names to the complainant); see also Richard Simon Jocelyn Peter Adams v. Truth About Jos, FA 907564 (Nat. Arb. Forum Mar. 9, 2007) (concluding that when a respondent stipulates to the transfer of the disputed domain name in its response or expresses a willingness to transfer the disputed domain name to the complainant, the panel can forego an analysis of the Policy and order the immediate transfer of the disputed domain name); see also Metro. Life Ins. Co. v. Secure Whois Info. Serv., FA 910715 (Nat. Arb. Forum Mar. 16, 2007) (“In light of Respondent’s request that the Panel enter an order transferring the disputed domain name to Complainant without findings of fact on the elements set forth in Paragraph 4(a) of the Policy, and the lack of any objection thereto, the Panel declines to set forth or address the Parties’ contentions.”).
Having ruled that Respondent’s Response constitutes an explicit consent to transfer, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nikkociti.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq., Panelist
Dated: July 23, 2007
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