Citigroup Inc. v. Philip Morrish
Claim Number: FA1501001600832
Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Philip Morrish (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citiresearch.com>, registered with Easyspace Ltd..
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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2015; the National Arbitration Forum received payment on January 21, 2015.
On January 22, 2015, Easyspace Ltd. confirmed by e-mail to the National Arbitration Forum that the <citiresearch.com> domain name is registered with Easyspace Ltd. and that Respondent is the current registrant of the name. Easyspace Ltd. has verified that Respondent is bound by the Easyspace 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 January 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2015 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@citiresearch.com. Also on January 22, 2015, 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 February 10, 2015.
Timely Additional Submissions were received from Complainant on February 17, 2015.
On February 19, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
Subsequently on February 20 2015, Additional Submissions were received from Respondent, which were admitted and considered by the Administrative Panel.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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
Relying on its ownership of the trademark registrations set out below, Complainant submits that the disputed domain name is nearly identical and confusingly similar to the CITI trademark and service mark in which it has rights. Complainant submits that the disputed domain name <citiresearch.com> fully incorporates Complainant’s CITI mark. In support of this submission Complainant cites the finding of the panel Citigroup Inc. v. Acme Mail, FA 0402000241987 (Nat. Arb. Forum Apr. 12, 2004) (finding the domain name “citiban.com” confusingly similar to the complainant’s CITI mark because the “domain name incorporates in its entirety Complainant’s CITI mark and the CITI mark is the dominant element in Respondent’s domain name”).
Complainant further submits that inclusion of the generic word “research” does nothing to dispel confusion, citing the panel decision in State Farm Mutual Automobile Insurance Company v. HostMonster.Com, POWERFUL WEB HOSTING - 1500 GB Disc - 15,000 GB Transfer c/o HostMonster.com INC FA1237647 (Nat. Arb. Forum January 23, 2009) (“Respondent’s <statefarmresearch.com> domain name contains Complainant’s entire mark, merely adds the generic term “research,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the additions of this generic term and the gTLD do not distinguish the disputed domain name from Complainant’s STATE FARM mark and that the <statefarmresearch.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent has no rights or legitimate interests the disputed domain name. Respondent uses the e-mail address “philip.morrish@btinternet.com” and has referred to himself in the WHOIS database as “Philip Morrish,” and has never been commonly known as “citiresearch.com” and has never used any trademark or service mark similar to the disputed domain name by which he or she may have come to be known, other than the infringing use noted herein. In Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy, FA0406000290633 (Aug. 11, 2004) the panel found that that the respondent had not established rights or legitimate interests in the disputed domain name where there was no evidence that the respondent was commonly known by the domain name; similarly in Citigroup Inc. v. Acme Mail, FA 0402000241987 (Nat. Arb. Forum Apr. 12, 2004) the panel found that the respondent had not established rights or legitimate interests in the disputed domain name where “[r]espondent has no proof and there is no evidence in the record to suggest that [r]espondent is commonly known by <citiban.com>”);
Complainant asserts that it has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks.
Furthermore Complainant alleges that Respondent has never used the disputed domain name to operate any bona fide or legitimate business, neither is he making a protected non-commercial or fair use of the disputed domain name.
Respondent has used the disputed domain name in conjunction with a website advertising the services of Complainant’s competitors. Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. In making this submission Complaiant cites the panel decision in Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy, FA0406000290633 (Aug. 11, 2004) (“Respondent’s use of domain names that are confusingly similar to Complainant’s CITIBANK marks to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine and products and services that compare with those offered by Complainant 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 of the domain names pursuant to Policy ¶ 4(c)(iii).”).
Complainant submits that Respondent has registered and is using the disputed domain name <citiresearch.com> in bad faith alleging that Respondent had actual knowledge of Complainant’s CITI mark when he registered the domain name in issue, as evidenced by Respondent’s use of the CITI mark in his domain name. The mere fact that Respondent has registered a domain name which incorporates the famous trademark of a well-known company is alone sufficient to give rise to an inference of bad faith as the panel held in Northwest Airlines, Inc., v. Mario Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“The selection of a domain name which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). Analogous activities by cyber-squatters operating in other industries were considered to rise to the level of “opportunistic bad faith
Furthermore at the time of registration of the disputed domain name, Respondent had at least constructive knowledge of Complainant’s marks because of Complainant’s registration of its marks with the USPTO.
Complainant alleges that the disputed domain name was likely registered in order to disrupt Complainant’s business at its competing “Citi Research” web page and submits that Respondent’s use of the disputed domain name to disrupt Complainant’s business by advertising competing products and services constitutes evidence of bad-faith registration and use under Policy ¶ 4(b)(iii).
Furthermore, Complainant alleges that Respondent’s use of Complainant’s marks in the disputed domain name to intentionally attract consumers to a pay-per-click website constitutes bad-faith registration and use under ¶ 4(b)(iv), citing Diners Club Int’l Ltd. v. PrivacyProtect.org a/k/a Domain Admin, FA1107001396775 (Nat. Arb. Forum Aug. 24, 2011) (finding registration and use in bad faith where the respondent used the domain name to divert consumers from the complainant and profit from pay-per-click fees generated thereby).
Complainant alleges that the disputed domain name has been put to use to disrupt the business of Complainant as Respondent’s competitor, and to intentionally attract, for commercial gain, Internet users to Respondent’s website or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website. This behavior by Respondent evidences at least two of the four explicit examples of bad faith set forth in the Policy.
B. Respondent
In his Response, Respondent submits that the disputed domain name was registered on 7 January 2003 in good faith and in the common belief that all of Citigroup’s investment banking activities were and would remain in a globally recognized entity, Salomon Smith Barney. Respondent only became aware of the Citigroup unit called ‘Citi Research’ within a division called ISG after he received notification of the Complaint and then undertook Internet searches. Respondent submits that Complainant abandoned the Salomon Smith Barney name after a series of scandals that tarnished the bank’s reputation.
Respondent has furnished a copy invoice from Easyspace for the registration of the domain name <citiresearch.com> dated January 7, 2003.
As far as the Respondent can determine Complainant only uses ‘@citi.com’ for its email and internet communications and marketing across all business units, including ‘Citi Research’. Respondent has been unable to ascertain precisely when the Citigroup commenced using the name ‘Citi Research’ and but it was at least some nine (9) months after the ‘citiresearch.com’ domain was registered to the Respondent.
Complainant does not appear to have undertaken any Internet searches before it commenced use of the term ‘Citi Research’ otherwise it would have identified that the disputed domain name was registered to the Respondent. Additionally, the Complainant has not sought to use ‘citiresearch’ as a trading entity or separately identified the unit otherwise it would have notified the Respondent earlier than twelve years (12) years after the registration and the Respondent, and any reasonable person, can only conclude that the Complainant is seeking to acquire the domain unfairly.
Respondent denies that the disputed domain name is identical or confusingly similar to the CITI trademark any more than any other trading using the word ‘Citi’ as a prefix to their trading names – a quick search of the UK’s Companies House register of companies will clearly demonstrate. The Complainant’s CITI trademark is specific as to the colour, font, and arch over the letter ‘T’ that starts and ends with the letters ‘i’. Since Respondent does not have either a logo or operational website there can be no confusion as claimed by the Complainant.
Respondent denies that the disputed domain name was registered in bad faith and asserts that he registered the domain name in good faith on January 7, 2003 (sic). He was completely unaware of any Citigroup entity called ‘Citi Research’ until notified of this Complaint. Respondent formed a UK limited company registered with Companies House in 2003 but because Respondent has not yet determined a commercial or not-for-profit use for the disputed domain name that would not detract from or imply any trading off the Complainant’s trade mark he decided to dissolve the company and rather than file annual accounts for the dormant company as was required by company law. Respondent has not established a website at the disputed domain name address nor does he use the associated email designation. Once a suitable commercial or not-for-profit and non-competitive marketplace has been identified it is Respondent’s intention to use the domain name. Importantly, Respondent has never had any intention to misleadingly divert consumers or to tarnish Complainant’s trademark or service mark.
Respondent denies that he registered the disputed <citiresearch.com> domain name or any other domain names with a view to selling them on for a profit to “legitimate” owners of the name or mark. However, since being notified of this Complaint, Respondent has notified Complainant’s representative that he is willing to negotiate the transfer of the disputed domain name to the Complainant on more than one occasion, the most recent occasion being 27 January 2015 for which no reply was received, despite Respondent being advised previously that Complainant was willing to undertake a speedy negotiation.
Respondent’s last proposal, since withdrawn, was for the Complainant to settle all direct costs associated with a transfer, hold Respondent harmless and provide £6,000 in ‘Corporate Sponsorship’ to a not-for-profit organization for which the Complainant would receive identification for their sponsorship and 3 invitations to three leading City of London functions’ during 2016. Respondent has not asked for out-of-pocket costs. Respondent asserts that he remains willing to transfer the disputed domain name to Complainant on confirmation of the first two conditions and is not interested whether the Complainant does or does not wish to consider corporate sponsorship in any sum of monies to the not-for profit organization.
Respondent further denies that he registered the disputed domain name to disrupt or prevent the Complainant from using the domain name, on the contrary, he asserts that Complainant, through its lack of interest, has clearly demonstrated that it has no interest in the disputed domain name.
C. Additional Submissions Complainant
In timely Additional Submissions, Complainant comments that Respondent does not dispute that the <citiresearch.com> domain name is identical or confusingly similar to Complainant’s trademark; nor does Respondent present any evidence that he has any rights or legitimate interests in respect of the disputed domain name. Furthermore, Complainant submits that Respondent’s arguments regarding bad faith registration and use are unavailing.
In asserting that that there is no likelihood of confusion between the disputed domain name <citiresearch.com> and Complainant’s CITI mark, Respondent misses the point because Complainant’ rights in the CITI trademark are not limited to any specific design, as evidenced by the trademark registrations provided.
Additionally, Respondent’s assertion that there is no web site to which the disputed domain resolves is inaccurate, because as demonstrated in the Complaint and accompanying exhibits, the disputed domain name resolves to a web site containing advertisements for competitors of Complainant including credit card applications and bill payment services. Some of the advertisements also reference Citigroup’s CITI and CITIBANK marks directly in a manner that trades on Complainant’s goodwill and is likely to confuse users as to affiliation with Complainant.
Furthermore, the disputed domain name <citiresearch.com> itself creates consumer confusion regardless of content given that the domain name completely incorporates Complainant’s CITI trademark.
Not only does Respondent fail to provide any evidence or explanation for this assertion, that he did not register the <citiresearch.com> domain name in bad faith because he “has been unable to ascertain precisely when the Citigroup [sic] commenced using the name ‘Citi Research’ but it was at least some nine (9) months after the ‘citiresearch.com’ domain was registered to the Respondent” but also, this argument is irrelevant to whether the <citiresearch.com> domain name was registered in bad faith.
Respondent admits that he has never been able to determine “a commercial or not-for-profit use for the [disputed domain name] that would not detract from or imply any trading off the Complainant’s Trade Mark. . .” Consequently, Respondent cannot argue that he was unaware of Complainant’s CITI trademark and service mark, or that he did not believe <citiresearch.com> was confusingly similar to Complainant’s mark at the time of registration.
Respondent’s offer made on January 27, 2015 to sell the disputed domain name to Complainant on the terms outlined above further weighs in favor of a finding of bad faith registration and use.
D. Additional Submissions Respondent
In Additional Submissions, Respondent denies having registered the disputed domain name to sell it to Complainant. Respondent re-asserts that since originally registering the disputed domain name he has never approached Complainant or its representatives to sell the domain name, which again demonstrates good faith registration. In fact, upon learning of the present dispute Respondent volunteered to negotiate a speedy and amicable resolution and that position remains unchanged. Therefore, Respondent respectfully requests that the Administrative Panel deny the remedy requested by the Complainant because its claims are unsubstantiated.
In conclusion, Respondent made the following proposal for the immediate transfer of the disputed domain name, irrespective of the decision of this Panel:
That Complainant settles any and all domain transfer/registration fees incurred in full; that Complainant and/or any of its subsidiaries, agents, directors and officers agree to take no further actions whether legal or financial or otherwise against Respondent or any enterprises or activities with which he is involved.
Facts
The Complainant is an international financial services enterprise carrying on business in 160 countries and jurisdictions around the world with 200 million customer accounts and is the owner of the following registered trademarks:
· United Kingdom registered trade mark CITI, which is a figurative mark with stylized lettering, registration number UK00002216234, filed on December 3, 1999 and registered on April 4, 2003), for goods and services in classes 9, 16, 36, and 42;
· U.S. trademark registration CITI , number 1,181,467, registered on December 8, 1981 for services in international class 36.
Respondent has furnished a copy invoice from Easyspace dated January 7, 2003 for the registration of the domain name <citiresearch.com>, however the WhoIs record states that the disputed domain name was registered on May 24, 2008. As nothing of substance turns on the point, it is not necessary to decide which is the correct date.
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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
United States of America.
Complainant’s rights are not limited to the use of the CITI mark in any particular color or stylized writing as submitted by Respondent. The U.S. trademark registration is for the word mark CITI and the dominant element of the U.K. figurative registration is also the word CITI in stylized lettering.
This Panel accepts Complainants submissions that the disputed domain name is confusingly similar to the CITI trademark. The disputed domain name incorporates Complainant’s registered trademark in its entirety and the additional element “research” does not in any way serve to distinguish the mark. In the circumstances, given that Complainant has established a research service, the additional element in fact adds to the likelihood of confusion.
Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name, as Respondent is not commonly known by the domain name and he has admitted that he has not yet determined a commercial or not-for-profit use for the disputed domain name that would not detract from or imply any trading off the Complainant’s trade mark. It is well established under the Policy that in such circumstances the burden of proof shifts to Respondent to establish such right or interests and he has failed to do so.
Respondent has caused or permitted the disputed domain name to resolve to a web page which appears to be hosted by <yoursupportservices.co.uk> which states that it is maintained on behalf of one of its customers that has not yet uploaded a website and appears to have pay-per-click links including links to third party financial services providers.
This Panel finds that such use cannot be a bona fide commercial use of the domain name and Respondent cannot acquire rights or legitimate interest in the domain name such by such use as it is taking predatory advantage of Complainant’s goodwill,
Complainant has therefore also satisfied the second element of the test in Policy ¶ 4(a)(ii).
On the evidence before this Panel, while Respondent denies any knowledge of the use of the words CITI research” by Complainant at the time, he admits that he had actual knowledge of Complainant’s CITI trademark and service mark and its reputation in the name CITI, when he registered the disputed domain name.
He further admits that he has not yet determined a commercial or not-for-profit use for the domain name that would not detract from or imply any trading off the Complainant’s trade mark.
Yet he has proceeded to cause or permit the disputed domain name, which is confusingly similar to Complainant’s trademark, to resolve to a website that is providing links to competitors of Complainant. On the balance of probabilities he is earning pay per click income from the use of the disputed domain name. This Panel finds on the balance of probabilities, that by using the disputed domain name in such fashion, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web site to which the disputed domain name now resolves, by creating a likelihood of confusion with Complainant's CITI mark as to the source, sponsorship, affiliation, or endorsement of the website hosted by <yoursupportservices.co.uk> and is thereby knowingly taking predatory advantage of Complainant’s goodwill.
Furthermore when he received notice of this Complaint, Respondent immediately initiated negotiations to sell the domain name to Complainant on terms that Complainant would settle all direct costs associated with the transfer, hold Respondent harmless and provide £6,000 in ‘Corporate Sponsorship’ to a not-for-profit organization for which Complainant would receive identification for the sponsorship and 3 invitations to three leading City of London functions.
The circumstances lead this Panel to conclude that on the balance of probabilities Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the CITI trademark and service mark for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.
For completeness, This Panel rejects Complainant’s allegation that the disputed domain name has been put to use to disrupt the business of Complainant as Respondent’s competitor. There is no evidence on the record that Respondent is engaged in any competing business.
Finally, in his Additional Submissions, Respondent has once again offered to reach an amicable settlement of this dispute, however his offer comes too late in the proceedings to defeat Complainant’s claim and furthermore he continues to request more than his out-of-pocket expenses.
This Panel finds that Complainant has therefore also satisfied the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citiresearch.com> domain name TRANSFERRED from Respondent to Complainant.
__________________
James Bridgeman, Panelist
Dated: March 3, 2015
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