WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citigroup Inc. v. Ling Shun Shing
Case No. D2003-0328
1. The Parties
The Complainant is Citigroup Inc. of New York, United States of America, ("the Complainant") represented by Skadden, Arps, Slate, Meagher & Flom, LLP of United States of America.
The Respondent is Ling Shun Shing, of Shanghai, China ("the Respondent").
2. The Domain Name and Registrar
The disputed domain name ("the domain name") is registered with iH Inc. d/b/a DotR ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2003. On April 30, 2003, the Center transmitted by email to iH Inc. d/b/a DotR a request for registrar verification in connection with the domain name. On April 30, 2003, iH Inc. d/b/a DotR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on May 23, 2003.
The Center appointed Tony Willoughby as the Sole Panelist in this matter on May 28, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the world renowned financial services company, Citigroup, which through its wholly owned subsidiaries, Citicorp and Citibank own a variety of service mark registrations for CITIGROUP, CITI and CITIBANK dating back to 1998, 1979 and 1959 respectively. All those registrations are for financial services of one kind or another.
The Respondent registered the domain name on September 25, 2002. The domain name is connected to a website which features a search engine containing various categories of links including links entitled "Finance," "Credit Cards," "Loans," "Homeloans" and "Re-Finance." These links lead to separate pages of various other websites many of which advertise or display information about financial services in direct competition with the Complainant�s business. The Respondent�s website also currently features a list of twenty links along the right hand side of the web page under the heading "Popular Searches," two of which contain Complainant�s CITIBANK mark. Again, many of these links (including the two featuring the CITIBANK name) lead to websites offering financial services, including credit card and mortgage services, that are in direct competition with Complainant�s services.
On March 20, 2003, the Complainant�s representative sent the Respondent a letter setting out the Complainant�s rights in the CITIGROUP mark and seeking immediate transfer of the domain name to the Complainant.
The Respondent did not reply.
5. Parties� Contentions
A. Complainant
The Complainant contends that the domain name is confusingly similar to the Complainant�s trademarks CITGROUP and CITI and particularly having regard to the fact that the Respondent is using the domain name to connect to a website which links to various financial services offerings having no connection with the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant states that it has found no evidence that the Respondent has ever been commonly known by the domain name, nor that the Respondent operates a bona fide business under the domain name. Indeed, the Complainant asserts that the Respondent�s website merely features links to third party websites and offers no significant additional content. The Respondent contends upon information and belief that the Respondent has never used any trademark or service mark similar to the domain name by which it may have come to be known, has not made use of the domain name in connection with any legitimate business and is not making a protected non-commercial use of the domain name.
The Complainant points to the confusing similarity of the domain name with the Complainant�s trademarks and asserts that visitors to the Respondent�s website are likely to be confused, believing that the Respondent, his activities and his website, are connected or affiliated with, sponsored or endorsed by or emanate from the Complainant.
The Complainant asserts that it has not given the Respondent any licence, permission or authorization by which the Respondent could own or use any domain name registrations incorporating the famous CITIGROUP or CITI marks.
The Complainant contends that the Respondent registered and is using the domain name in bad faith. The essence of the Complainant�s allegations in this regard are set out in the following passage from the Complaint:
"The Respondent registered and is using the domain name in bad faith as evidenced by the fact that Respondent manifestly knew at the time of his registration of Complainant�s ownership and the fame of its CITIGROUP and CITI marks and therefore, by registering the domain name, intentionally attempted to capitalize upon and create a likelihood of confusion with the Complainant�s marks. Respondent�s bad faith use is further evidenced by the fact that (i) Respondent�s "" website features references to Complainant�s other CITI Marks (further evidencing Complainant�s knowledge of and familiarity with Complainant), (ii) Respondent�s "" website connects to web pages that compete with Complainant�s business; (iii) Respondent has failed to reply to Complainant�s attempted communications, and (iv) Respondent�s use violates specific representations made by Respondent in the Registrar�s Registration Agreement."
Elsewhere in the Complaint, albeit not in support of the bad faith allegation, the Complainant draws attention to a previous proceeding involving the Respondent, namely ABC Distributing Inc v. Ling Shun Shing (NAF 0209000126640, December 11, 2002). In that case, the Panel ordered that the Respondent�s domain name registrations for , , , and be transferred to ABC Distributing, Inc., owner of the ABC DISTRIBUTING mark and operator of "." The Panel in that case held that those domain names should be transferred to the Complainant in that proceeding.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name comprises the Complainant�s well known service mark CITIGROUP with the addition of the letter "s." The spelling of the name CITIGROUP is unique and exclusively referable to the Complainant. While there may be circumstances where a plural is sufficient to distinguish a domain name from the singular form, this is not such a case.
The fact that the Respondent�s website and the links to be found there (a) demonstrate that the Respondent has all along been aware of the existence of the Complainant and (b) promote services which compete with those of the Complainant, leads the Panel to believe that the risk of confusion is high.
Accordingly, the Panel finds that the domain name is confusingly similar to a trademark/service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Under this head the Complainant is required to prove a negative, namely that the Respondent has no rights or legitimate interests in respect of the domain name. Proving a negative in these circumstances can be difficult and particularly where, as here, little is known of the Respondent and the Respondent has not responded.
In such circumstances, it is sufficient for the Complainant to make out a prima facie case. Here, the Complainant has produced proof of its trademark/service mark rights, has shown that the Respondent must have been aware of the existence of the Complainant�s rights when he registered the domain name and will have been aware of the likelihood of confusion resulting from his use of the domain name. The Complainant has indicated that it has made enquiries and has been unable to find any basis upon which the Respondent can be said to have rights or legitimate interests in respect of the domain name. The Complainant confirms that the Complainant has not granted the Respondent any licence to use its trademarks for this or any other purpose.
The Panel finds that the Complaint has made out a prima facie case and that the Respondent has a case to answer. The Respondent has produced no answer despite having been given an ample opportunity to do so.
The Panel concludes in the circumstances of this case that the Respondent has no answer. In coming to this conclusion the Panel has pondered as to what conceivable answer the Respondent might have been able to put forward had he bothered to respond. However, the Panel can think of no basis upon which the Respondent could sensibly be said to have rights or legitimate interests in respect of the domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Clearly, when registering the domain name, the Respondent was aware of the existence of the Complainant and its trademark/service mark rights. In linking his website at "www." to a variety of other sites offering financial services which compete with the Complainant, the Respondent was deliberately setting out to confuse Internet users and to damage the Complainant. In the absence of an explanation, the Panel infers that the Respondent was motivated by commercial gain.
The Panel finds that the domain name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
7. Decision
In light of the foregoing findings namely that the domain name is confusingly similar to a service mark or service marks in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered in bad faith and is being used in bad faith, the Panel directs that the domain name be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: June 2, 2003
Full & Egal Universal Law Academy