Citigroup Inc. v. Acme Mail
Claim
Number: FA0402000241987
Complainant is Citigroup Inc. (“Complainant”) represented
by Bruce Goldner, of Skadden, Arps, Slate, Meagher & Flom, LLP, Four Times Square, New York, NY
10036. Respondent is Acme Mail (“Respondent”), Box 455,
Miami, FL 33265.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <citiban.com>, registered with Tucows
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 26, 2004; the Forum received a hard copy of the
Complaint on March 1, 2004.
On
Feruary 27, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain
name <citiban.com> is registered with Tucows Inc. and that
Respondent is the current registrant of the name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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
March 8, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 29, 2004 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@citiban.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 3, 2004 pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citiban.com>
domain name is confusingly similar to Complainant’s <CITIBANK> and
<CITI> marks.
2. Respondent does not have any rights or
legitimate interests in the <citiban.com> domain name.
3. Respondent registered and used the <citiban.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Citibank, Inc., was formed in 1998, following a business merger of Citicorp and
Travelers Group Inc. Since 1959, Complainant has provided a broad range of
financial services through Citicorp or Citibank to individual and corporate
consumers worldwide, including checking and savings accounts, loans, credit and
debit card services, insurance, mortgages, bill payment services, brokerage
services and investment advisory services.
Complainant
holds trademark registrations with the United States Patent and Trademark
Office for the CITIBANK and CITI marks (Reg. No. 691,815, issued January 19,1960
and Reg. No. 1,181,467, issued December 8, 1981, respectivly). Complainant also
holds over 140 trademark registrations with the United States Patent and
Trademark Office for the CITI family of marks (eg. Reg. No. 2,171,043, issued
July 7, 1998; Reg. No. 2,218,621, issued January 19, 1999; Reg. No. 2,361,565,
issued June 27, 2000 and Reg. No. 2,801,076, issued December 30, 2003).
Complainant also owns more then fifteen trademark registrations with the United
States Patent and Trademark office for the CITIBANK family of marks (eg. Reg.
No. 2,382,641, issued February 11, 1986; Reg. No. 2,245,102, issued May 11,
1999 and Reg. No. 2,636,299, issued October 15, 2002).
Complainant’s
CITI and CITIBANK marks have been famous and well-known since 1980. Complainant
owns approximately 800 domain name registrations that feature the well-known
CITI family of marks, including the CITIBANK mark, including
<citibank.com>, <citibank.org>, <citibank.net>,
<citi.com> and <citi.us>. Complainant uses its multiple domain names
to prove worldwide access to its finance and banking products and related
services.
Respondent
registered the disputed domain name on October 27, 2000. Respondent is using
the domain name to divert Internet users to Respondent’s website which offers
finance and banking services and advertising similar to those offered by
Complainant.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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 has
established rights in the CITIBANK and CITI marks through registration with the
United States Patent and Trademark Office. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”); see Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s
domain name is confusingly similar to Complainant’s CITIBANK mark because the
domain name merely deletes the letter “k” from Complainant’s CITIBANK mark,
thus capitalizing on a common spelling and typing mistake. Deleting a letter
from Complainant’s mark or misspelling Complainant’s mark does not remove the
domain name from the realm of confusingly similarity with regard to Policy ¶
4(a)(i). See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a Respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to Complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).
Furthermore,
Respondent’s domain name is confusingly similar to Complainant’s CITI mark
because Respondent’s domain name incorporates in its entirety Complainant’s
CITI mark and the CITI mark is the dominant element in Respondent’s domain
name. The inclusion of a trademark in its entirety in a domain name when the
mark is the dominant element in the domain name renders the domain name
confusingly similar to Complainant’s mark. See Nikon, Inc. and Nikon Corp.
v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing
similarity under the Policy is decided upon the inclusion of a trademark in the
domain name rather than upon the likelihood of confusion test under U.S.
trademark law); see also Oki
Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact
that a domain name incorporates a Complainant’s registered mark is sufficient
to establish identical or confusing similarity for purposes of the Policy
despite the addition of other words to such marks.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Moreover,
Respondent has no proof and there is no evidence in the record to suggest that
Respondent is commonly known by <citiban.com>. Thus, Respondent
has not established rights or legitimate interests in the domain name pursuant
to Policy ¶ 4(c)(ii). See
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark); see also
Charles Jourdan Holding AG v. AAIM, D2000-0403
(WIPO June 27, 2000) (finding no rights or legitimate interests where (1)
Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in
the domain name precede Respondent’s registration; (3) Respondent is not
commonly known by the domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain name for its own commercial gain. Respondent’s
confusingly similar domain name diverts Internet users, who intend to search
for a website under Complainant’s mark to a website sponsored by Respondent
that directly competes with Complainant’s business. This practice of diversion
for commercial gain evidences bad faith registration of and use of a domain
name pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with Complainant’s mark and offering the same chat services via his
website as Complainant); see also Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) (finding that Respondent had engaged in bad faith use and registration by
linking the domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks).
Respondent
registered the domain name for the primary purpose of disrupting Complainant’s
business by diverting Internet traffic, intended for Complainant’s website, to
Respondent’s website which offers directly competing financial services.
Registration of a domain name for the primary purpose of disrupting the
business of a competitor is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area); see
also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business
from Complainant to a competitor’s website in violation of Policy 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <citiban.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 12, 2004
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