Citigroup Inc. v. Austin Scherer
Claim Number: FA1010001352688
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Austin Scherer (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citipond.com> and <fcitibank.com> (“the Domain Names”), registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2010; the National Arbitration Forum received payment on October 18, 2010.
On October 18, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of them. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 October 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@citipond.com and postmaster@fcitibank.com. Also on October 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 16, 2010.
On November 22, 2010, a timely Additional Submission was received from Complainant. On November 23, 2010, a timely Additional Submission was received from Respondent.
On November 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
Complainant is a well-known financial services company formed on October 8, 1998, following the business combination of Citicorp and Travelers Group Inc. It is the registered proprietor of United States Patent and Trademark Office (“USPTO”) registered trademarks CITI (Reg. No. 1,181,467 registered on December 8, 1981) and CITIBANK (Reg. No. 691,815 registered on January 19, 1960). On July 16, 2010, it applied to the USPTO to register the mark CITI POND.
The domain name <fcitibank.com> was registered on May 18, 2009. The domain name <citipond.com> was registered on July 22, 2010. Prior to a cease and desist letter from Complainant in October, 2010, both Domain Names resolved to parking pages provided free of charge by GoDaddy, containing links to websites, some of which promoted financial services. Immediately upon receipt of the cease and desist letter, Respondent redirected the Domain Names to blank pages.
A. Complainant
Complainant says the <fcitibank.com> domain name is confusingly similar to its CITI and CITIBANK marks and the <citipond.com> domain name is confusingly similar to its CITI and the CITI POND marks and that Respondent has no rights or legitimate interests in the Domain Names, which were registered and are being used in bad faith.
As to legitimacy, Complainant says:
· Respondent has never been commonly known as "citipond" nor any variation thereof, and has never previously used any trademark or service mark similar to the Domain Names by which it may have come to be known.
· Respondent has never operated any bona fide or legitimate business under the Domain Names and is not making a protected non-commercial or fair use of them.
· Respondent was undoubtedly aware of Complainant’s marks prior to the registration of the Domain Names, given their considerable registration and/or use.
· Complainant has not authorized Respondent to own or use any domain names which are confusingly similar to any of Complainant’s marks.
As to bad faith, Complainant says:
· As a U.S. resident, Respondent has at least constructive notice of all marks registered on the principal registry of the USPTO, including the CITI Mark which was registered over 25 years before the Domain Names were registered.
· Given Complainant’s considerable use of the CITIPOND Mark, Respondent knew or should have known of such mark at all relevant times.
· Respondent has used the Domain Names to attract potential customers to its website where it promotes directly competing goods and services. This use is especially troubling when one considers the extremely sensitive personal financial information that Respondent was attempting to obtain from visitors to the website which was associated with the confusingly similar domain name, especially in conjunction with the abuse of the CITI mark on the website itself.
· Respondent attempted to obtain money from Complainant in exchange for the Domain Names.
· Further, the suspicious timing of the registration of the <citipond.com> domain name indicates opportunistic bad faith.
B. Respondent
Respondent asks that each of the Domain Names be considered separately. He agrees that he has not been commonly known or referred to by Citipond or any variations of Citi and that Complainant has not granted him any license, permission, or authorization by which he could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks. It was never his intention that the Domain Names be confusingly similar to Citibank properties. While superficially the names themselves may be close to trademarks, the site content Respondent was developing was meant to make it obvious that these sites were in no way affiliated with Complainant and to constitute non‐commercial or fair use of the Domain Names.
The <citipond.com> site was meant to be a site containing pictures of Respondent and his girlfriend at the Bryant Park ice skating rink. The site was inactive while Respondent developed the concept.
Fcitibank.com was meant to be a gripe site, where users could report on their negative experiences with Citibank. Respondent envisions a single forum where users may read reviews about a company and the company may respond. To that end, Respondent purchased 10 Fortune 500 company and/or notable names with F at the beginning. In this scenario, to read reviews on a company, or gripe about a company, all the Internet user would have to do would be to add an F in front of the company name to get to the right place. Respondent contemplated keeping the network growing as he bought more names. There was never an intention of confusing the user, who would immediately know the site was not affiliated with the company in question. As with Citipond, the Fcitibank site was inactive while Respondent developed the concept.
Respondent says he is obviously aware of the Citibank name, but because he believes his site content to be fair use and not infringing, he did not believe it to be an issue.
Respondent says that whenever a domain name is purchased through the registrar GoDaddy, a temporary page is immediately and automatically generated, where the domain name is “parked”. GoDaddy automatically populates the page with pay‐per-click advertisements. This is done neither at Respondent’s request nor on his behalf and none of the proceeds from the pay‐per-click advertisements go to Respondent.
As soon as Complainant informed Respondent of its issue with the Domain Names, he directed the page to a blank site – rendering it dormant.
Respondent has a pay‐per‐click/cash parking account with GoDaddy where several of his other domains are engaged in pay‐per‐click advertising, but he must manually add each domain to that account if he wishes to benefit financially from the pay‐per‐click advertisements. Respondent purposefully and intentionally did not add the Domain Names to that account because he never had any intention of using either as a pay‐per‐click advertisement site.
Respondent denies demanding payment for transfer of the Domain Names.
Respondent denies that his constructive notice of Complainant’s trademarks indicates bad faith. Because the usage of the Domain Names is permissible fair use, the existence of the CITI marks does not indicate Respondent’s bad faith.
Respondent disagrees that there is considerable use of the CITI POND mark. The small ice skating rink at Bryant Park is called “The Pond at Bryant Park” not “Citi Pond”. There are limited references to CitiPond when conducting a Google search. Moreover, a search on Citibank’s website yields no results for “CitiPond” or “Pond”. A search for “citi pond” on Citibank’s official website generated results related to “citi” but nothing relating to “Citi Pond”. Additionally, a search on Citigroup’s website for “Citipond” or “Citi Pond” or “pond” also yields no results. “Citi Pond” is not the widely used name of the rink, and Respondent disagrees that there is considerable use by Complainant such as to indicate Respondent’s bad faith.
Respondent denies using the Domain Names to attract potential customers and that he was attempting to obtain “extremely sensitive personal financial information.” He never actively attracted anyone to the site, nor did he request information or try to obtain any information from site visitors, financial or otherwise. As mentioned, the links on the site were not chosen, initiated, or created by Respondent. Nor did he benefit from any of the clicks. If there was any information gathered on the third party sites after clicking away from Respondent’s domains in question, none of this information was ever directed back to him.
Respondent denies that there is anything suspicious about the timing of the registration of the domain name <citipond.com>, saying that he began to see communications for the upcoming Rockefeller Center Ice Rink and it reminded him that it was time to begin the site concept. As a result, he purchased that domain name.
C. Additional Submissions
Paragraph 12 of the Rules does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the "sole discretion" as to their acceptance and consideration. The overriding principle of Rule 12 enables the Panel both to disregard unsolicited submissions received within the time limits contemplated by the Forum’s Supplemental Rule 7 and to take into account unsolicited submissions received outside those time limits. See Darice, Inc. v. Texas International Property Associates - NA NA, FA1082320, (Nat. Arb. Forum 16 November, 2007).
The Panel has had regard to the following parts of the additional submissions.
Complainant
For purposes of confusion analysis under the Policy, the content associated with the Domain Names is not taken into consideration. Respondent offers no relevant arguments that the Domain Names are other than confusingly similar to Complainant’s trademarks, the existence and validity of which Respondent acknowledges.
It is well settled that the registrant of a domain name is ultimately responsible for the content associated with it.
The correspondence between the parties shows that Respondent was prepared to sell the Domain Names to Complainant but was unwilling to accept reimbursement for his reasonable out of pocket expenses related to their registration.
Respondent’s claims that he had some wholesome purpose in mind when he registered the Domain Names are unsubstantiated.
Respondent’s claim that a Google search does not support long standing use of the CITIPOND mark is false. It is also irrelevant since both [Domain Names] are confusingly similar to Complainant’s CITI mark.
Respondent
Examples of the 10 “F” names that I currently own are <Fcitibank.com>, <Fpeta.com>, <Fburgerking.com> and <Fwholefoods.com>. All 10 domains were purchased on the same date. I would not have used this consistent “F” pattern if it was my intention to confuse.
Complainant has established the elements entitling it to the relief it seeks.
Paragraph 15(a) of 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 Complainant must prove each of the following three elements with respect to each of the Domain Names to obtain an order that they should be cancelled or transferred:
(1) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(3) the Domain Names have been registered and are being used in bad faith.
The Panel recognizes that the Domain Names need to be considered separately and were registered at different times.
It is common ground that Complainant has rights in the United States Federally registered trademarks CITI and CITIBANK. However, its application to register the mark CITI POND does not give rise to trade mark rights. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 17, 2001); see also Spencer Douglass MGA v. Absolute Bonding Corporation, D2001-0904 (WIPO May 9, 2001). Although claiming extensive use of the CITI POND mark, Complainant has produced no evidence from which it could be concluded that it has common law rights in that mark.
The test of confusing similarity under the Policy requires comparison of the Domain Names and the CITI and CITIBANK trademarks alone, see Wal-Mart Stores, Inc. v. Traffic Yoon, D2006‑0812 (WIPO Sept. 20, 2006), ignoring the top level domain “.com,” see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000‑1525 (WIPO May 2, 2001) and Rollerblade, Inc. v. Chris McCrady, D2000‑0429 (WIPO June 28, 2000), and ignoring the content of the websites to which the Domain Names resolve, see A&F Trademark, Inc. v. Justin Jorgenson, D2001‑0900 (WIPO Sept. 19, 2001), except where that content might indicate an intention on the part of Respondent to confuse Internet users, in which case the conclusion that the Domain Names are confusingly similar to the trademarks may more readily be drawn, see RapidShare AG v. majeed randi, D2010-1089 (WIPO Aug. 17, 2010).
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. See SANOFI-AVENTIS v. Jason Trevenio, D2007‑0648 (WIPO Nov. 7, 2007).
Applying these principles here, the Panel finds the domain name <citipond.com> to be confusingly similar to Complainant’s CITI mark and the domain name <fcitibank.com> to be confusingly similar to Complainant’s CITIBANK mark. The suffix “pond” in the domain name <citipond.com> does not detract from the distinctiveness of Complainant’s CITI mark and the prefix “f” in the domain name <fcitibank.com> is not as clearly and unequivocally hostile to Complainant as was the domain name <fucknetscape.com>, found not to be confusingly similar to NETSCAPE in America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, D2001-0918 (WIPO Sept. 14, 2001).
Complainant has established this element of its case.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even perfunctory preparations have been held to suffice for the purpose of sub-Paragraph 4(c)(i). See SHIRMAX RETAIL LTD. v. CES MARKETING GROUP, INC., AF-0104 (eResolution Mar. 20, 2000); see also Lumena s-ka so.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000); see also ROYAL BANK OF CANADA v. XROSS, AF-0133 (eResolution Feb. 29, 2000).
Respondent admits that he has not been commonly known or referred to by Citipond or any variations of Citi and that Complainant has not granted him any license, permission, or authorization by which he could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks. These admissions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that he does have rights or legitimate interests in those names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23, 2000) and the cases there cited.
Respondent contends that he intended the <fcitibank.com> domain name, which he registered in 2009, to be a non-commercial, “fair use” gripe site about Complainant but did not get around to establishing the site before the Complaint was received.
He contends the <citipond.com> domain name was to be used for a website exhibiting pictures of the Respondent and his fiancée at the ice skating rink called “The Pond at Bryant Park” but, in the short time between registration and the Complaint, did not manage to establish the website.
Respondent has provided no evidence, concrete or otherwise, to support these claims, nor any explanation as to why he chose a domain name incorporating Complainant’s CITI mark in order to show pictures of himself and his fiancée at The Pond at Bryant Park skating rink. Accordingly, Respondent having failed to discharge his evidentiary burden, the Panel finds that Respondent has no rights or legitimate interests in either of the Domain Names.
Complainant has established this element of its case.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The Panel finds this case to fall within paragraph 4(b)(iv) above, for the following reasons.
Respondent’s contention that he planned a gripe site for the domain name <fcitibank.com> demonstrates that Respondent was aware of Complainant and its CITIBANK mark when he registered that domain name in 2009. That Respondent was also aware of Complainant’s CITI mark when he registered the <citipond.com> domain name in 2010 is demonstrated by Exhibit C provided by Respondent: the official website for The Pond at Bryant Park bears the inscription “made possible by CITI”. Accordingly, the Panel concludes that Respondent had Complainant in mind when he registered each of the Domain Names.
The only use to which the Domain Names have been put prior to Complainant’s “cease and desist” letter, is to resolve to parking pages containing sponsored links including links offering financial services by competitors of Complainant. Although Respondent says he had nothing to do with this, it is settled that “the registrant of a domain name is ultimately responsible for the content of a website that resolves from it.” See Mars Inc. v. Grack, FA 1217837 (Nat. Arb. Forum Sept. 18, 2008) citing StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”) also citing Netbooks, Inc. v. Lionheat Publishing, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”).
Aware of Complainant’s marks, Respondent chose to register confusingly similar domain names and did nothing to ensure that they led to innocuous web pages until he received Complainant’s “cease and desist” letter, whereupon he exercised the control over the Domain Names that, as registrant, he always had. The fact that Respondent may not have derived any personal benefit from the Go Daddy parking pages does not alter the fact that those pages were calculated to attract, for commercial gain, Internet users likely to be confused as to the source, sponsorship, affiliation, or endorsement of products or services offered on those parking pages. As the one responsible for those parking pages, Respondent must be taken to have intended to arouse such confusion.
Under the Policy, paragraph 4(b)(iv), such use by Respondent of the Domain Names is evidence of both bad faith registration and bad faith use. In the absence of any countervailing evidence of good faith registration, the Panel concludes that the Domain Names were registered and are being used in bad faith.
Complainant has established this element of its case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citipond.com> and <fcitibank.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: December 5, 2010
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