National Arbitration Forum

 

DECISION

 

Citigroup Inc. v. Watch My Domain c/o Nick M.

Claim Number: FA0602000638108

 

PARTIES

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 Watch My Domain c/o Nick M. (“Respondent”), 522 Shantivan, MHADA, Mumbai 400053, IN.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <citifin.com>, registered with Lead Networks Domains Pvt. Ltd.

 

PANEL

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.

 

Steven L. Schwartz as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 16, 2006.

 

On March 22, 2006, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <citifin.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that the Respondent is the current registrant of the name.  Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 March 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 11, 2006 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 postmaster@citifin.com by e-mail.

 

An electronic copy of the Response was received on April 11, 2006.  The hard copy of the Response was received after the deadline for response.  Therefore, the Forum does not consider the Response to be in compliance with ICANN Rule #5 (a).    The Panel has decided to consider Respondent’s Response notwithstanding its deficiency in meeting formal submission requirements.

 

An additional submission was received in a timely manner from Complainant on April 17, 2006.

 

On April 20, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Steven L. Schwartz as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS (ORIGINAL AND ADDITIONAL SUBMISSIONS)

A.     Complainant

 

1.   Citigroup is the world-renowned financial services company that owns an extensive family of famous trademarks and service marks comprised of or featuring the CITI mark (the “CITI Marks”).  In addition to U.S. and Indian rights, the CITI Marks are applied for or registered in approximately 200 countries throughout the world.  Among other applications and registrations, the CITI mark, U.S. Reg. No. 1,181,467, 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;” the CITIBANK mark, U.S. Reg. No. 691,815, was registered on January 19, 1960 for “banking services;” and the CITIGROUP mark, U.S. Reg. No. 2,406,753, was registered on November 21, 2000 for “full range of insurance and financial services; banking services, credit card services; securities trading, consulting and underwriting services; investment services.”  Complainant has made extensive use of these marks by providing its services throughout the U. S., in India, and around the world.  It has an active presence worldwide, with over 1,700 branches and 5,100 ATMs in approximately 100 countries.

2.   Respondent is a serial cybersquatter and has been ordered to transfer domain names in at least the two following matters:

Blair Holdings, Inc. v. Watch My Domain c/o Nick M., FA 526028 (Nat. Arb. Forum Sept. 23, 2005)

FMTM Distribution Limited v. Watch My Domain, D2005-0724 (WIPO Sept. 20, 2005)         

3.      Respondent has, also, registered the domain names containing the valuable trademarks of third parties including:  <wwwjurassicpark.com>; <wwwsittles.com>, <wwwlibertymutual.com>, <wwwdccomics.com> and <wwwwaltdisney.com>

4.      Respondent registered the offending domain on March 14, 2004, decades after Complainant began extensive marketing of its goods and services under its marks.  Complainant has not given Respondent any license, permission, or authorization to use any of its marks.

5.      The offending domain name resolves to a website featuring links promoting the goods and services of others, including financial and travel services.  Respondent has placed prominent links entitled, “citi financial auto,” and provides links to Complainant’s direct competitors such as ING.  Respondent also advertises the services of “SEDO” and indicates that the domain name “may be for sale.”  The balance of the links on the websites to which the offending domain name resolves lead to the websites of others featuring goods and services which may or may not compete with Complainant, depending on the identity of the linked-to party; but are not websites, goods or services, or entities which are sponsored by or affiliated with Complainant.

6.      The offending domain is nearly identical and confusingly similar to the CITI Marks and fully incorporates Complainant’s marks; and is an abbreviation for the CITIFINANCIAL mark.

7.      Respondent lacks rights or legitimate interest in the offending domain name and has never been commonly known as <citifin.com> nor any variations thereof, and has never used any trademark or service mark similar to the offending domain name by which it may have come to be known, other than the infringing use.

8.      Respondent has never operated any bona fide or legitimate business under the

offending domain name and is not making a protected non-commercial or fair use of the offending domain name.  Respondent is believed to receive click-through fees through the use of the domain names by diverting internet users searching for Complainant to Complainant’s competitors.

9.      Resspondent has actual or constructive knowledge of Complainant’s marks prior to registration of the offending domain given their considerable registration and/or use.

10.  Respondent has registered and is using the offending domain name in bad faith; and by registering domain names containing the trademarks of various trademark owners in order to prevent Complainant and those other trademark owners from using such domain names, is engaging in a pattern of abusive domain name

registrations.

11.  Complainant believes that Respondent receives ad revenue from the advertisements found on the website to which the offending domain name resolves, and is attempting to attract maximum traffic to the site for commercial gain.

12.  Complainant need not have exclusive rights to a mark to assert those rights within a UDRP proceeding.

13.  Respondent does not contest Complainant’s rights in its registered CITI Marks.

14.  Respondent states the element “fin” found in the disputed domain name symbolizes for the word “finance.”  This is an admission against interest on the part of Respondent as the word “finance” is substantially identical to the element “financial” found in three of Complainant’s six marks which are nearly identical and “finance’ is the core of Complainant’s business.  Further, the <citifin.com> domain name is only a few letters off from the CITI FI, CITIFI (stylized) and CITIFI.COM marks.

15.  Complainant applied for and was issued a Notice of Allowance from the USPTO for the CITIFINANCE mark.  However, it abandoned that application in favor of the registration of the CITIFINANCIAL mark.

16.  Registration of its relevant trademarks and service marks are prima facie evidence of validity presumptive of inherent distinction.

 

B. Respondent

 

1.      Complainant does not have exclusive rights to the word CITI.

2.      The “fin” appended to the <citifin.com> domain name symbolizes “finance.”

3.      Complainant applied for and abandoned is USPTO application for the CITIFINANCE mark.

4.      Legal actions are pending “sub judice” in the High Court of Jurisdiction of Bombay for the cases FA 526028 and D2005-0724 (WIPO) and cannot be referenced in this matter.

 

FINDINGS AND DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the CITI mark by registering numerious trademarks and service marks containing the term CITI with the United States Patent and Trademark Office (“USPTO”) (including the CITI mark, Reg. No. 1,181,467, issued 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;” the CITIBANK mark, Reg. No. 0691815 issued January 19, 1960 for “banking services;” and the CITIGROUP mark, Reg. No. 2,406,753, issued November 21, 2000 for “full range of insurance and financial services; banking services, credit card services; securities trading, consulting and underwriting services; investment services.”)   See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

Complainant contends that the <citifin.com> domain name is confusingly similar to Complainant’s CITI mark because the domain name incorporates Complainant’s mark in its entirety and adds the term “fin,” which Complainant asserts is an abbreviation for “financial,” and the generic top-level domain “.com.”  Furthermore, the term “fin” as an abbreviation for financial describes a segment of Complainant’s business.  The Panel finds that such minor additions to Complainant’s registered mark are insufficient to negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).   

 

Rights or Legitimate Interests

 

Complainant has made a prima facie case for Policy ¶ 4(a)(ii), and having done so, the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

 

Complainant argues that Respondent is not authorized or licensed to register or use a domain name that incorporates Complainant’s mark.  Moreover, Complainant contends that Respondent is not commonly known by the <citifin.com> domain name.  The Panel finds that Respondent is not commonly known by the <citifin.com> domain name, and concludes that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Furthermore, Complainant asserts that Respondent is using the <citifin.com> domain name to redirect Internet users interested in Complainant’s CITI services to Respondent’s website featuring financial services that compete with Complainant.  The Panel finds that Respondent’s use of a domain name, under the circumstances of this case, that is confusingly similar to Complainant’s CITI mark to redirect Internet users interested in Complainant’s services to Respondent’s website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent is using the <citifin.com> domain name for Respondent’s commercial gain by diverting Internet users interested in Complainant’s CITI products and services to Respondent’s website featuring financial services that compete with Complainant.  The Panel finds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to the respondent’s site).

 

Furthermore, the Panel finds that Respondent registered the confusingly similar domain name in order to either promote services that compete with Complainant or to derive revenue by trading off of Complainant’s notoriety and name recognition.  The Panel finds that in either case, that Respondent registered the domain name in bad faith and continues to use the domain name for such improper purposes under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competed with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Gorstew Ltd. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from the respondent travel agency to the complainants, who operated Sandals hotels and resorts). Absent proof of bad faith, advertising activity through the operation of a portal website can be a legitimate interest in the domain name.  First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO May 1, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest); Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum May 25, 2004).  However, in this case, given the presence of bad faith, such use is not a legitimate interest or use.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <citifin.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Steven L. Schwartz Panelist
Dated: May 10, 2006