Citigroup Inc. v. Online Webmaster / Jens Hoehrmann
Claim Number: FA1701001710605
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Online Webmaster / Jens Hoehrmann (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.shop>, registered with Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Scott R. Austin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 4, 2017; the Forum received payment on January 4, 2017.
On January 6, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <citi.shop> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 January 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2017 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@citi.shop. Also on January 9, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 27, 2017.
Complainant’s Additional Submission was received and determined to be compliant with the Rules on February 1, 2017.
Respondent’s Additional Submission was received and determined to be compliant with the Rules on February 3, 2017.
On February 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant, Citigroup Inc. (Citigroup), a United States multinational banking and financial services corporation with its global headquarters in New York, New York.
2. As of 2014, Citigroup was the fourteenth largest bank holding company in the world by assets and the eighth largest by market capitalization. Complainant has been present in Indonesia since 1968 and offers Institutional and Retail banking services to its clients in the country.
3. Complainant has been continuously using and promoting its CITI mark in the US since at least as early as 1979 and in Indonesia since at least as early as 2005, as the source of a myriad of financial services, including commercial lending; servicing loans and extensions of credit; real estate lending; mortgage financing and mortgage servicing; investment advisory and financial advisory services; and providing venture capital to others.
4. Complainant owns a large number of trademark registrations for its CITI mark providing trademark protection in countries all over the world.
5. Complainant has rights in the mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,181,467, for commercial lending; servicing loans and extensions of credit; real estate lending; mortgage financing and mortgage servicing; investment advisory and financial advisory service and providing venture capital to others, registered Dec. 8, 1981) as well as other international trademark agencies (e.g., Indonesia Reg. No. (Indonesia Reg. No. IDM000030683) for “Services in the field of banking and finance, including in the field of brokerage services and securities, services in the field of insurance, financial issues, monetary issues, housing / land (real estate) issues,” registered March 8, 2005.
6. Complainant’s CITI mark is inherently distinctive, strong, famous, and deserving of a broad scope of protection.
7. Panelists in prior UDRP proceedings have found Complainant’s CITI mark to be well known and famous for financial services.
8. Respondent registered the <citi.shop> disputed domain name on September 23, 2016, nearly four decades after Complainant began using its CITI mark in commerce.
8. The domain names <citi.com> , <citi.bank> and <citi.org>, among numerous others, are currently registered to Complainant either in Complainant’s name or through its wholly-owned subsidiary Citibank, N.A.
9. Respondent’s <citi.shop> disputed domain name is confusingly similar to Complainant’s CITI mark as the disputed domain name encompasses the CITI mark in its entirety and adds only the top-level domain “.shop,” which differences are not sufficient to distinguish the domain from Complainant’s mark.
10. Respondent has no rights or legitimate interests in the disputed domain name.
11. Respondent, comprised of Online Webmaster / Jens Hoehrmann has no connection with Complainant and is not commonly known by the <citi.shop> disputed domain name.
12. Complainant has not authorized Respondent’s use of any of the CITI marks and Respondent has not been a licensee or business partner of Complainant.
13. Respondent’s use of the confusingly similar domain to divert users seeking Complainant’s website to the website of Respondent, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
14. Respondent registered and is using the disputed domain name <citi.shop> in bad faith.
15. Respondent registered the disputed domain to create a likelihood of confusion and falsely suggest a connection between Complainant and Respondent which is being exploited for commercial gain.
16. Respondent had knowledge of Complainant’s rights in the well-known CITI mark at the time of registration based on the fame and decades of prior use by Complainant of the CITI mark.
B. Respondent makes the following contentions:
1. Complainant has no rights in “Citishop.”
2. Respondent needs more time to develop its website, as it has only had the domain name since January 3, 2017.
3. Respondent intends for the domain name to be a platform for new technology for consumers finding shopping offers under the slogan: “CITI.SHOP / LET’S START SHOPPING THE RIGHT WAY.”.
4. Respondent did not have knowledge of Complainant when acquiring the domain name from the previous registrant.
5. Respondent had no intent for commercial gain, and the website is not commercialized.
6. Respondent is not responsible for prior monetization of the domain name through prior use in connection with affiliate advertising programs.
C. Complainant’s Additional Submission – A Reply to Respondent’s Contentions
1. Complainant has demonstrated rights in the CITI mark.
2. Merely adding a new TLD to the CITI trademark is insufficient in distinguishing a domain name.
3. Respondent’s intra-registrar transfer assertion is spurious. The proxy service was removed subsequent to the filing of this dispute, and the registration data never reflected any transfer referenced by Respondent.
4. The website that now resolves at the disputed domain name is a WordPress placeholder website, Respondent’s assertions that it is under construction are not substantiated, and Complainant has submitted source code as evidence in support of its contention.
D. Respondent’s Additional Submission – A Reply to Complainant’s Additional Submission
1. The disputed domain name <citi.shop> is an acronym for the word 'Cityshop'
2. The word component 'City' that does not conflict with Citigroup or any of its trademarks.
3. This evaluation is based on old UDRP panel decisions, but doesn't reflect the changes that have taken place in the domain technology with the introduction of the new generic domain extensions launched since 2014 including the disputed domain names, as well as in more recent UDRP panel decisions.
4. Panels in more recent decisions have considered both sides of the dot in determining confusing similarity.
5. Respondent’s mark is a generic term and is used by many different organizations.
Complainant has been continuously using and promoting its CITI mark since at least as early as 1979 in the U.S. and at least as early as 2005, as the source of a myriad of financial services, Commercial Lending; Servicing Loans and Extensions of Credit; Real Estate Lending; Mortgage Financing and Mortgage Servicing; Investment Advisory and Financial Advisory Services; Providing Venture Capital to Others.
Complainant owns and has established rights in the CITI mark through evidence submitted in Annex Exhibit D attached to the Complaint showing numerous trademark registrations in the United States, Europe, and numerous jurisdictions around the world, including Indonesia, the location of Respondent.
Complainant’s CITI mark was registered and well known in the U.S and many other countries around the world well before Respondent registered its disputed domain name on September 26, 2016.
Respondent’s disputed domain name is confusingly similar to Complainant’s CITI mark because it is comprised of Complainant’s CITI mark in its entirety as the first part of the disputed domain name, and adds only the top-level domain (“TLD”) “.shop,” to Complainant’s mark, which additional term as a TLD is inconsequential to overcome a finding of confusing similarity.
Respondent’s WHOIS information identifies Respondent as Online Webmaster / Jens Hoehrmann, whose listed address is Perumahan Lempong Sari B-36, Yogyakarta, Java, 55581, ID.
Respondent is not commonly known by the disputed domain name or by Complainant’s CITI mark, nor is Respondent licensed by Complainant to use its CITI mark.
Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
The disputed domain name has been used for generating third-party content from affiliates relating to travel bookings which services are not connected to Complainant and to divert users seeking Complainant’s website to the website of Respondent for Respondent’s commercial gain.
Respondent registered and is using the disputed domain name <citi.shop> in bad faith.
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.
Complainant contends that it has longstanding and well established use of its CITI mark in connection with its business in the financial services industry and has rights in the mark based on registration of the mark with the USPTO as well as other international trademark agencies including the United States (See e.g., Reg. No. 1,181,467, registered Dec. 8, 1981) as well as Indonesia, the country where Respondent is located according to the WHOIS information provided for Respondent for the disputed domain name (See, e.g., Reg. No. IDM000390017, registered June 19, 2013). USPTO registrations are widely regarded as sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (FORUM Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Prior Panels have found that registration of a mark with the USPTO is sufficient to demonstrate a complainant’s rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (FORUM Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).); BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (FORUM Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).); BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (FORUM Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Accordingly, based on the extensive trademark registration evidence submitted by Complainant, this Panel finds Complainant has proved its rights in the CITI mark under Policy ¶ 4(a)(i).See Compl., at Attached Ex. D.
Complainant also argues that Respondent’s disputed domain name <citi.shop> is identical or confusingly similar to the formative comprising the CITI mark as the domain name includes Complainant’s registered mark in its entirety and differs only through the addition of the TLD “.shop.” Other panels have found that adding a TLD may be disregarded under the Policy as TLD suffixes are required in order to register domain names. See generally Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (FORUM Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel may agree that “.shop” adds no distinguishing value and is an irrelevant addition to Complainant’s fully incorporated mark in <citi.shop> and therefore Complainant has established the initial element represented by Policy ¶ 4(a)(i)..
The Panel recognizes and is mindful that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (FORUM Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (FORUM Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name <citi.shop>. Complainant contends first that the WHOIS information for the registrant or registrant organization, as well as the disputed domain name itself does not reflect Respondent’s name, so Respondent cannot be considered commonly known by the disputed domain name. WHOIS information has been relied upon in making determinations whether a respondent was commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS for the diputed domain name lists “Online Webmaster / Jens Hoehrmann” as registrant. The Panel finds, therefore, that Respondent is not commonly known by the disputed domain name <citi.shop>.
Complainant next argues that Respondent’s only active use of the disputed domain name is for generating third-party content from affiliates relating to travel bookings, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Prior panelists have found that links to unrelated third party sites does not provide use sufficient to represent any rights or legitimate interests without further support. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (FORUM Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides evidence of Respondent’s use of the website using the disputed domain name solely for such user diversion purposes. See e.g., Compl., at Attached Ex. L (redirecting Internet users to <24.holiday>, a hotel booking site). Respondent contends that it needs more time to develop its website, as it has only had the domain name since September 26, 2016, and Respondent has submitted only one screenshot of its purported use of the domain name. The Panel finds Respondent’s evidence insufficient and its arguments unpersuasive based on the cases cited above. In contrast the Panel finds Complainant’s evidence sufficient to support its contentions, and finds, therefore, that Respondent has not made a bona fide offering of goods or services nor does Respondent’s use constitute any legitimate noncommercial or fair use. Complainant has met its burden under Policy ¶ 4(a)(ii).
Under this element of the Policy, Complainant first argues that Respondent registered and used the disputed domain name <citi.shop> in bad faith because Respondent registered the disputed domain name to create a likelihood of confusion and falsely suggest a connection between Complainant and Respondent, which is being exploited for commercial gain. Complainant provides evidence to show that Respondent has previously used the website to resolve to <24.holiday>, a website for “HotelsCombined,” which purportedly offered commercial travel booking and comparison services. See Compl., at Attached Ex. L. The website evidence provided also shows Respondent utilized third-party advertising affiliates to monetize traffic and clicks which redirect users to third-party websites. See Compl. at Attached Exs. L–N (all seemingly in the hotel/travel realm). Redirection to commercial websites imputes a respondent’s exploitation of a confusingly similar disputed domain name for its own commercial gain in bad faith pursuant to Policy ¶ 4(b)(iv)). See Reese v. Morgan, FA 917029 (FORUM Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel finds that Complainant has met its burden to show that Respondent has used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant next contends Respondent has registered and used the disputed domain name in bad faith because Respondent had both actual and constructive knowledge of Complainant’s marks given the registration of Complainant’s marks decades prior to Respondent’s registration of its disputed domain name on September 26, 2016, as well as the global fame of Complainant’s marks. The global fame of Complainant’s marks has been acknowledged in previous UDRP cases. See e,g., Citigroup Inc. v. jose vicente gomar llacer / Gandiyork, SL - B98466980, FA1652712 (FORUM Jan. 25, 2016) (“Finally, because of the global fame of Complainant’s mark, it is clear that Respondent registered the domain with actual knowledge of the CITI mark. Past panels have held that a respondent demonstrated bad faith . . . where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered.”). The Panel finds that based on the global fame of Complainant’s marks to conclude that Respondent had actual knowledge of Complainant’s marks, which shows that Respondent registered and used the disputed domain name in bad faith and Complainant has, therefore, met its burden under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citi.shop> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: February 17, 2017
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