Citigroup Inc. v. Paul and or Carel Ruchalski and or Roxas / Tropical.Holdings
Claim Number: FA1606001680887
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Paul and or Carel Ruchalski and or Roxas / Tropical.Holdings (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <citi.ceo>, <citibank.ceo>, and <citigroup.ceo>, registered with GoDaddy.com, LLC.
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.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2016; the Forum received payment on June 23, 2016.
On June 24, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citi.ceo>, <citibank.ceo>, and <citigroup.ceo> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2016 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.ceo, postmaster@citibank.ceo, postmaster@citigroup.ceo. Also on June 27, 2016, 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 July 18, 2016.
On July 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant submits the following: Complainant is an American multinational banking and financial services corporation headquartered in New York, New York, first founded as City Bank of New York in 1812. Citigroup was formed from one of the world’s largest mergers in history by combining the banking giant Citicorp and financial conglomerate Travelers Group in October 1998. As of 2014, Citigroup was the fourteenth largest bank holding company in the world by assets and the seventh largest by market capitalization. Citigroup is the largest foreign bank in the Philippines, and a recognized leader in the local financial community. Citigroup consistently ranks as one of the top five banks in the Philippines in terms of asset size and earnings. Citigroup has six branches in the Philippines, including in Makati, Greenhills, Cebu, Binondo, Alabang and Libis, with three serving as corporate branches. As a result of the foregoing, Complainant has developed extremely valuable goodwill and an outstanding reputation in the CITI/CITIBANK/CITIGROUP Marks and the CITI/CITIBANK/CITIGROUP Domain Names. The CITI/CITIBANK/CITIGROUP Marks are famous and are indications of high quality and origin associated exclusively with Complainant. This Complaint is based upon the Complainant’s trademark/service marks, CITI, CITIBANK, and CITIGROUP, which have been used by the Complainant in the Philippines since at least as early as 2006, 2002, and 2002, respectively, and in the United States since at least as early as 1981, 1960, and 2000, respectively; however, Complainant owns numerous other registrations for the trademark/service marks CITI, CITIBANK, and CITIGROUP in jurisdictions around the world (collectively, the “CITI/CITIBANK/CITIGROUP Marks”). In addition, the domain names CITI.COM, CITI.US, CITI.PH, CITI.MANAGEMENT, CITI.CONSULTING, CITIBANK.COM, CITIBANK.US, CITIBANK.PH, CITIBANK.MANAGEMENT, CITIGROUP.COM, CITIGROUP.US, CITIGROUP.PH, CITIGROUP.CONSULTING, and CITIGROUP.MANAGEMENT, among numerous others, are currently registered to Complainant either in Complainant’s name or through its wholly-owned subsidiary Citibank, N.A. (collectively the “CITI/CITIBANK/CITIGROUP Domain Names”). Some of these domain names have been used in Complainant’s business as early as 1998, and have been continuously used and associated with Complainant’s business since that time. For example, CITI.COM, CITI.PH, CITIBANK.COM, and CITIGROUP.COM redirect Internet users to Complainant’s website located at ONLINE.CITI.COM, which makes extensive use of the CITI/CITIBANK/CITIGROUP Marks. Complainant has promoted the CITI/CITIBANK/CITIGROUP Marks globally, and the CITI/CITIBANK/CITIGROUP Marks have widespread recognition in the Philippines, the United States, and worldwide. In 2015, BrandFinance ranked CITI the 25th most valuable brand, Interbrand ranked CITI the 45th best global brand, and Forbes ranked CITI the 81st most valuable brand in the world. In 2015, BrandFinance Global Banking 500 rated CITIBANK the 5th best global banking brand. In 2015, Forbes ranked CITIGROUP the 81st most valuable brand in the world, and BrandFinance Global 500 ranked CITIGROUP the 25th most valuable global brand. In addition, the CITI/CITIBANK/CITIGROUP Marks are frequently mentioned in top periodicals and other news sources in the Philippines.
B. Respondent
Respondent submits the following: They purchased Citi.ceo, Citibank.ceo, and Citigroup.ceo to PROTECT the complainant's organization and also eventually market the group's leadership in a better, virtual image and that they and I have purchased many domains in clusters as new Top Level Domains (TLDs) emerged with the goal of allowing companies to expand their cyberspace presence on search engines more robustly with Respondent’s new website platforms. Respondent further alleges that they are not passively holding any domains because all of their prior purchases have an active plan associated with them and they purchased many domains to highlight and promote their new design approach to websites while marketing anyone they sponsor for free.
Respondent also submits that with a limited budget, they purchased valuable domains when they could offer an opportunity to showcase the capabilities of their virtual artists. The Citi domains in dispute are 3 examples.
Moreover, Respondent points out that they specifically choose those domains because they believe they could pose a risk to the bank itself. As an example, they don’t think Citi.ceo would be used to scam people out of money directly but could be used to send misinformation to media and decrease public confidence in that organization through the creation of email or a website from the domain.
Complainant is a very well-known financial institution with activities of global scale and the holder of a series of CITI+ trademarks and domain names in various countries worldwide, including the country of Respondent’s location (Philippines). Complainant’s CITI+ trademarks are internationally well-known and qualify as famous trademarks with valuable goodwill associated with the Complainant.
Respondent, without having Complainant’s license, authorization or consent to do so, registered, during the second half of 2015, the domain names under review, that incorporate in full Complainant’s trademarks, domain names, distinguishing features of origin and company name.
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.
As per the requirements of the Policy Para. 4(a)(i) this Panel finds that the domain names under review (CITI.CEO, CITIBANK.CEO, CITIGROUP.CEO). are identical to the trademark rights of Complainant, because they contain in their entirety, trademarks owned exclusively by the Complainant (CITI, CITIBANK, CITIGROUP). The foregoing domain names are actually capable of giving rise to confusion as the addition of the top level generic domain name extension (.CEO) is not sufficient to differentiate them from the Complainant’s trademarks, distinguishing features of origin and company name used in commerce for its business and activities in the global online market.
As per the requirements of the Policy Para. 4(a)(ii) this Panel finds that the Respondent has no rights or legitimate interests in the domain names under review, and Respondent’s arguments that, among else, they registered the particular domain as a precautionary method of protecting Complainant from any third party abuse of their rights and as a platform for showcasing Respondent’s own services are insufficient for substantiating any legitimate interest or rights on Respondent’s part, in relation to the domain names under review.
As per the requirements of the Policy Para. 4(a)(iii) this Panel finds that the registration and use of the domain names under review were done in bad faith by the Respondent. Based on Respondent’s own submissions, it is clear that they were aware of Complainant’s relevant rights at the time of registering the particular domain names and nonetheless registered them in order to act in furtherance of their own interests despite the lack of Complainant’s consent for doing so i.e. among else as the Respondent submitted, in order to promote Respondent’s own services. Moreover, there is clear evidence that Respondent held the domain names under review without sufficient justification, as the plan Respondent submits it had in relation to the domain names under review was devised solely by Respondent, without license, authorization or consent by Complainant and despite Complainant’s expressed complaint and lack of consent towards Respondent for the foregoing acts, which were, among else, communicated to Respondent by Complainant’s warning letters.
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.ceo>, <citibank.ceo>, and <citigroup.ceo> domain name be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated: August 2, 2016
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