national arbitration forum

 

DECISION

 

Citigroup Inc. v. Jason Wilkie

Claim Number: FA1105001386677

 

PARTIES

Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Jason Wilkie (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <citiforcities.com>, <citiforcities.net>, <citiforcities.org>, and <citiforcities.biz> registered with Domain-It!, Inc., and <citiforcities.asia> registered with Instra Corporation Pty Ltd.

 

PANEL

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 Stoner, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2011; the National Arbitration Forum received payment on May 3, 2011. Complainant subsequently amended its Complaint.

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On May 4, 2011, Domain-It!, Inc., confirmed by e-mail to the National Arbitration Forum that the <citiforcities.com>, <citiforcities.net>, <citiforcities.org>, and <citiforcities.biz> domain names are registered with Domain-It!, Inc. and that Respondent is the current registrant of the names.  Domain-It!, Inc. has verified that Respondent is bound by the Domain-It!, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 3, 2011, Instra Corporation Pty Ltd., confirmed by e-mail to the National Arbitration Forum that the <citiforcities.asia> domain name is registered with Instra Corporation Pty Ltd. and that Respondent is the current registrant of the name.  Instra Corporation Pty Ltd. has verified that Respondent is bound by the Instra Corporation Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2011 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@citiforcities.com, postmaster@citiforcities.net, postmaster@citiforcities.org, postmaster@citiforcities.biz, and postmaster@citiforcities.asia.  Also on May 5, 2011, 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.

 

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A timely Response was received and determined to be complete on May 23, 2011.

 

On June 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant, Citigroup, contends that it is the world-renowned financial services company that owns an extensive family of famous trademarks and servicemarks, comprised of, or featuring the CITI trademark (“the CITI Marks”).  In addition to the marks in the U.S. and Australia, the CITI Marks are applied for, or registered in, approximately 200 countries throughout the world.  Among other applications and registrations, the Complainant is the owner of the following registrations in the U.S. and Australia:

 

CITI, U.S. Reg. No. 1,181,467 (incontestable status), which 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.”

 

CITI, Australian Reg. No. 1170362, which was registered on April 10, 2007 for “Insurance; financial affairs; monetary affairs; real estate affairs.”

 

Complainant alleges that it has made extensive use of these marks by providing its services throughout the United States, Australia and around the world, and thus, these marks have become famous under the laws of the United States and other relevant jurisdictions.  Further, the marks have obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention.

 

Complainant bases its Complaint on the following factual and legal grounds.

 

Citigroup was formed on October 8, 1998, following the business combination between two well-known companies, Citcorp and Travelers Group Inc.  Since as early as 1959, Citigroup (through Citicorp and Citibank) has provided a broad range of financial services to consumers and corporate customers 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 owns more than 100 registrations or applications for the CITI Marks in the United States alone, and has established rights in these marks through continuous use in commerce. The term, CITI for CITIES was first used by Complainant at the Shanghai Expo, which ran from May 1, through October 31, 2010.  Complainant was a global sponsor and the Official Bank of the USA National Pavilion at the Shanghai Expo. Due to the international nature of the attendance at the Shanghai Expo, Complainant’s use of the terms CITI FOR CITIES cannot be considered a mere localized use.

 

Complainant states that Wikipedia reports that over 73 million people had visited the Expo, and that 250 countries and international organizations had participated.

 

Complainant alleges that Respondent registered the offending domains, without license or permission, well after Complainant began extensive marketing of its goods and services under its CITI Marks. Complainant contends the nature of Respondent’s use of such names, indicates actual knowledge of Complainant’s marks.

 

Complainant alleges that with the exception of the <asia> variation, the offending domains have been put to use in pay-per-click advertising schemes promoting Complainant’s competitors. Some of these ads make direct reference to Complainant and its CITI Marks.  The <citiforcities.asia> domain name is being used to promote the services of “Asia Registry.”

 

Complainant also alleges that the offending domains are confusingly similar to Complainant’s marks because they fully incorporate Complainant’s CITI Mark  and merely add the phrase “forcities.”  Inclusion of such terms fails to distinguish the offending domains from Complainant’s marks.

 

Respondent, who refers to himself in the WHOIS record as “Jason Wilkie,” lacks rights or legitimate interests in the offending domains. Respondent has never operated any bona fide or legitimate business under the offending domains and is not making a protected non-commercial or fair use of such domains.

 

Respondent has used the offending domains to attract internet traffic to its website by creating confusion with Complainant and its marks. This is activity of bad faith registration, as found in the Policy.

 

Complainant alleges that, given the large number of domain names Respondent has registered, it appears that they are designed to be blocking registrations in order to prevent Complainant from reflecting its mark.

 

Complainant lastly alleges that Respondent is using the disputed domains in bad faith, as given the extensive registration and use of said names, including in Respondent’s residence of Australia, Respondent knew, or should have known, of such marks at all relevant time .

 

B. Respondent

 

Respondent has consented to transfer to the Complainant all of the disputed domains, which are the subject of Complainant’s Complaint.

 

FINDINGS

 

As the parties have both asked for the domain names to be transferred to the Complainant, Panel has foregone the traditional UDRP analysis and Orders forthwith, the transfer of the disputed domain names.  Accordingly, it is Ordered that the following domain names be transferred from Respondent to Claimant:

 

<citiforcities.com>; <citiforcities.net>; <citiforcities.org>; <citiforcities.biz>; and <citiforcities.asia>.

 

DISCUSSION

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 to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is 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 name; and

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

 

PRELIMINARY ISSUE:  CONSENT TO TRANSFER

 

Respondent has consented to transfer the <citiforcities.com>, <citiforcities.net>, <citiforcities.org>, <citiforcities.biz>, and <citiforcities.asia> domain names to Complainant.  However, after the initiation of this proceeding, Domain-It, Inc., and Instra Corporation Pty Ltd. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending.  As a result, the Panel has decided, that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name, but instead agrees to transfer the domain names in question to Complainant, to forego the traditional UDRP analysis and to order an immediate transfer of the <citiforcities.com>, <citiforcities.net>, <citiforcities.org>, <citiforcities.biz>, and <citiforcities.asia> domain namesSee Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

DECISION

Given Respondent’s consent to Transfer, the Panel orders that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <citiforcities.com>, <citiforcities.net>, <citiforcities.org>, <citiforcities.biz>, and <citiforcities.asia> domain names be TRANSFERRED from Respondent to Complainant.

 

Carol Stoner, Esq., Panelist

Dated:  June 20, 2011

 

 

 

 

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