WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citigroup Inc.,Citicorp and Citibank, N.A. v. Ghinwa and Gaiia and Faouzi Kh
Case No. D2003-0494
1. The Parties
The Complainants in this Administrative Proceeding are Citigroup Inc., a Delaware corporation with its principal place of business in New York, United States of America ("U.S.A. "), Citicorp, a Delaware corporation with its principal place of business in New York, U.S.A., and Citibank, N.A., a National Banking Association chartered under the laws of the United States of America, with its principal place of business in New York, U.S.A. Both Citicorp and Citibank, N.A. are wholly-owned subsidiaries of Citigroup Inc.
The Respondents are Ghinwa and Gaiia and Faouzi Kh. of Jounieh, Lebanon.
2. The Domain Name and Registrar
The domain name in dispute is .
The Registrar with which said domain name is registered is iH, Inc. d/b/a DotR (hereinafter "the Registrar").
3. Procedural History
On June 23, 2003, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail. The hard copy of the Complaint was received by the Center on June 25, 2003.
Said Complaint was submitted for decision in accordance with the Restrictions Dispute Resolution Policy for ".BIZ," adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001 (the "RDRP"), the Uniform Domain Name Dispute Resolution Policy, adopted by ICANN on August 26, 1999 (the "UDRP"), the Supplemental Rules for Restrictions Dispute Resolution Policy for ".BIZ," adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the "Supplemental RDRP Rules"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "UDRP Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "WIPO Supplemental UDRP Rules").
In accordance with Paragraph 4(a) of the UDRP Rules and Paragraph 5 of the WIPO Supplemental UDRP Rules the Center verified that the Complaint satisfied the formal requirements of the RDRP, the UDRP, the UDRP Rules, the Supplemental RDRP Rules and the WIPO Supplemental UDRP Rules and that payment in the required amount to the Center had been made by the Complainant.
On June 24, 2003, the Center sent a Request for Registrar Verification to the Registrar and on the same day, the Registrar replied inter alia confirming that the Registrar is the current registrar of the said domain name, that the Respondents are the registrants of the said domain name, that the UDRP applies to the said domain name registration, that the said domain name will be locked during this Administrative Proceeding, that the specific language of the registration agreement as used by the registrant for the said domain name is English.
On June 27, 2003, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents by post/courier (with enclosures), facsimile (Complaint without attachments) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorized representative of the Complainants by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondents that this Administrative Proceeding had commenced on June 27, 2003 and, that the Respondents were required to submit a Response to the Center on or before July 17, 2003.
No Response was received from the Respondents and on July 21, 2003, the Center sent a Notification of Respondent Default to the Respondents.
On July 23, 2003, after having received a Statement of Acceptance and Declaration of Impartiality and Independence from him, the Center proceeded to appoint James Bridgeman as the Administrative Panel. A Notification of Appointment of Administrative Panel and Projected Decision Date was sent to the Parties by e-mail. On the same day the case file was transmitted to the Administrative Panel.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The First Named Complainant is a financial services company that, through its wholly-owned subsidiaries including the co-Complainants, Citicorp and/or Citibank, N.A., owns a large number of registered service marks and trademarks including CITIBANK, CITI, CITIBANKING, CITICARD, CITICORP, CITIGROUP, and THE CITI NEVER SLEEPS.
The Complainants� mark CITIBANK, U.S. Reg. No. 691,815 was registered on January 19, 1960, for banking services. The Complainants� mark CITI, 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 Complainants have submitted copies of the U.S. trademark registrations for the CITIBANK and CITI marks in an annex to the Complaint.
The First Named Complainant was formed on October 8, 1998, following the business combination between two well-known companies, Citicorp and Travelers Group Inc. The Complainants provide a broad range of financial services to consumers and corporate customers, including traditional commercial banking services such as checking accounts, savings accounts, and loans, credit and debit cards, insurance, mortgages, bill payment services, brokerage services and investment advisory services.
In the U.S.A., the Complainants own more than 15 federal trademark registrations comprised of or including CITIBANK, including, without limitation, the following:
CITIBANK, U.S. Reg. No. 691,815 (registered January 19, 1960);
CITIBANK, U.S. Reg. No. 1,016,844 (registered July 29, 1975);
CITIBANKING, U.S. Reg. No. 1,284,589 (registered July 3, 1984);
CITIBANK CITICARD & DESIGN, U.S. Reg. No. 1,024,862 (registered November 11, 1975);
CITIBANK & DESIGN, U.S. Reg. No. 1,048,704 (registered September 21, 1976);
CITIBANK PREFERRED, U.S. Reg. No. 1,382,641 (registered February 11, 1986); CITIBANK PLATINUM SELECT 500, U.S. Reg. No. 2,188,588 (registered September 8, 1998);
CITIBANK PLATINUM SELECT, U.S. Reg. No. 2,184,962 (registered August 25, 1998);
CITIBANK EVERYTHING COUNTS, U.S. Reg. No. 2,402,872 (registered November 7, 2000);
CITIBANK PRACTICE ADVOCATE, U.S. Reg. No. 2,281,152 (registered September 28, 1999);
CITIBANK DRIVER�S EDGE, U.S. Reg. No. 2,216,112 (registered January 5, 1999);
CITIBANK EASY REWARDS & DESIGN, U.S. Reg. No. 1,989,943 (registered July 30, 1996); and
CITIBANK FAMILYTECH, U.S. Reg. No. 2,512,302 (registered November 27, 2001).
The Complainants have submitted copies of the United States Patent and Trademark Office printouts confirming such trademark registrations in an annex to the Complaint.
The First Named Complainant (through Citicorp and Citibank, N.A.) also owns registrations comprised of and/or featuring CITIBANK in approximately 200 other countries, including Lebanon. The Complainants have submitted prima facie evidence of these registrations also in an annex to the Complaint.
The Complainants also own approximately 800 domain name registrations incorporating said trademarks and service marks, including the CITIBANK mark. These domain name registrations include (registered December 3, 1999), (registered June 6, 2000), (registered August 27, 2002), and (registered February 2, 1991).
There is no information available about the Respondents except that provided in the contact details held on the Registrar�s files.
5. Parties� Contentions
A. Complainant
The Complainants submit that they have an active presence worldwide, and provide a wide variety of services worldwide, with over 1,700 Citibank branches and 5,100 ATMs in approximately 100 countries. The Complainants submit that they operate numerous Citibank branches throughout the Middle East, including two in Lebanon, where Respondents purportedly reside, through which the Complainants offer banking, investment, credit card and other financial services to customers throughout the Middle East.
The Complainants submit that their above trademarks and service marks have been unquestionably famous since at least 1980, and that the First Named Complainant and its wholly owned subsidiaries have more than 100 federally registered marks or applications. In this regard the Complainants refer to the decisions of the courts in Citigroup Inc. v. City Holding Co., 171 F. Supp. 2d 333, 351-52 (S.D.N.Y. 2001) and CIT Group, Inc. v. Citicorp, 20 F. Supp. 2d 775, 783 (D.N.J. 1998) wherein it submits that the courts decided that the Complainant�s said trademarks are famous marks. The Complainants further refer to the decision in Citigroup Inc. v. Lee Yunki, WIPO Case No. D2002-0042 (April 23, 2002) in which the administrative panel decided that the said trademarks and service marks had "undoubted worldwide fame."
The Complainants further submit that from 1998 through 2002, the Complainants have spent approximately $7 billion advertising said trademarks and service marks throughout the world. In 2002 alone, the Complainants generated over $71.3 billion in net revenues using its trademarks and service marks, including the CITIBANK mark, in connection with its financial and related services.
Since as early as 1959, the First Named Complainant through Citicorp and Citibank, N.A. has offered throughout the United States and worldwide, a variety of financial services, under marks comprised of and/or featuring CITIBANK.
The Complainants further submit that it is noteworthy that the Complainant registered all of the cited CITIBANK marks, as well as the , and domain names, prior to the registration by the Respondent of the said domain name , the subject of this Administrative Proceeding on December 1, 2001.
Additionally, the Complainants submit that on the Complainants� website, which has been operational since at least 1995, and on their website, operational since approximately 1999, the Complainants have been operating a highly successful and renowned service called CITIBANK ONLINE ("CITIBANK ONLINE"). CITIBANK ONLINE allows its many customers to conduct banking transactions and check banking statements on the Internet, and has met with such success that F, in its Spring 2003 Best of the Web issue, designated as its favorite online banking website. The Complainants have submitted a copy of a printout from the website reviewing the website together with copies of printouts from the and websites as an annex to the Complaint.
With regard to the Respondents, the Complainants submit that the domain name in issue herein was registered by the Respondents with DotRegistrar on December 1, 2001.
The Complainants further submit that the said domain name does not resolve to an active website. The web page appearing at the said domain name address states: "Website you are trying to reach is not active. Kindly contact the webmaster of this website. Sorry for inconvenience." The Complainants submit that the Respondents� said inactive site automatically links to the "DomainR" website, which offers domain registration, forwarding, redirection and parking services. The Complainants have submitted copies of printouts of the website pages to which said domain name resolves in an annex to the Complaint.
The Complainants submit that the said domain name is not being used primarily for a bona fide business or commercial purpose, nor has the Respondents evidenced any intention for any such future bona fide use. (RDRP, paras. 4(a), (b) and (c); Supplemental RDRP Rules, para. 3)
The Complainants submit that the said website is currently both inactive and without content and upon information and belief, the Complainants submit that the Respondents have never activated the website at any time, much less used it for a legitimate business purpose.
The Complainants submit that there is no indication whatsoever that the said domain name is used or intended to be used "(i) to exchange goods, services, property of any kind; or (ii) in the ordinary course of trade or business; or (iii) to facilitate the exchange of goods services, information, or property of any kind or the ordinary course of trade or business." Because the Respondents are not making a bona fide business or commercial use of the said domain name, the said domain name should be transferred to the First Named Complainant.
In support of this submission the Complainants refer to the decision in United Feature Syndicate, Inc. v. Komaba, WIPO Case No. D2002-0901 (November 14, 2002) in which the Complainants submit the administrative panel found that was not being used for a bona fide business or commercial purpose, and transferred the domain name to the complainant, in circumstances where the respondent�s website offered no goods or services, but linked to the respondent�s service provider.
The Complainants submit that the said domain name is identical and confusingly similar to the Complainants� said trademarks and service marks. (UDRP, para. 4(a)(i), rules, paras. 3(b)(viii), (b)(ix)(1))
The Complainants further submit that the said domain name is confusingly similar to the said trademarks and service marks in which the Complainants have prior and superior rights, and is identical to the name under which the Complainants provide CITIBANK ONLINE services, and the Complainants� domain names related thereto. The Complainants submit that the Respondents� registration of the said domain name appropriates the Complainants� internationally famous CITIBANK and CITI marks, as well as the name of Complainants� CITIBANK ONLINE service and the Complainants� corresponding domain names.
The Complainants submit that the said domain name fully incorporates the Complainants� famous CITIBANK and CITI marks, mimics the Complainants� prior domain name registrations of and and mimics the name under which Complainant provides its CITIBANK ONLINE services.
Accordingly, the Complainants submit that said domain name is confusingly similar to the Complainants� marks. The Complainants submit that this position is supported by the decision of the administrative panel in EAuto, LLC v. Triple S. Auto Parts, WIPO Case No. D2000-0047 (March 24, 2000) in which it was stated: "When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar." In that case the issue was the similarity between domain name and the complainant�s EAUTO mark.
The Complainants further refer to the decision of the administrative panel in Bayerische Motoren Werke AG v. , WIPO Case No. D2002-0615 (August 27, 2002) wherein, the Complainants submit, it was held that the domain name was confusingly similar to complainant�s BMW mark due to the fact that the whole of the complainant�s registered mark was incorporated in the domain name.
In addition, the Complainants submit that administrative panels routinely find confusing similarity where a domain name is merely the combination of a famous and distinctive mark, such as the CITIBANK mark, with a generic word, such as "online." In this regard the Complainant cites the decisions of administrative panels in Prada S.A. v. Cybershop Co., WIPO Case No. D2002-0662 (September 5, 2002) (finding confusing similarity where the domain name was comprised of complainant�s PRADA mark and the generic word "sports"); Nokia Corp. v. N, WIPO Case No. D2000-0102 (April 18, 2000) (finding confusing similarity where domain name was comprised of complainant�s NOKIA mark and the generic word "girls").
The Complainants submit that the fact that they have so widely used CITIBANK as a mark and the words CITIBANK ONLINE both as the name of their Internet banking service and as a domain name, serves to enhance the confusing similarity in the present dispute.
In this regard the Complainants cite the decisions of the administrative panels in Compagnie Générale des Etablissements MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504 (August 1, 2002) (finding strong confusing similarity between domain name and MICHELIN mark, where the complainant sold tires under the mark); Nike, Inc. v. Bestinfo, WIPO Case No. D2002-0543 (September 8, 2002), (finding confusing similarity between and NIKE mark, where the complainant sold shoes under the mark).
The Complainants submit that given the success and popularity of the Complainants� services in general, and given the success and popularity of Complainants� CITIBANK ONLINE Internet banking services in particular, consumers are especially likely to assume that the said domain name is affiliated with, sponsored by, or operated by Complainants.
The Complainants further claim that the Respondents have no rights or legitimate interests in the said domain name. (UDRP, para. 4(a)(ii), UDRP Rules para. 3(b)(ix)(2), RDRP paras. 4(a), (b) and (c))
The Complainants state that they have found no evidence that the Respondents have ever been commonly known by the name "Citibankonline," or that the Respondents operate a bona fide business or activity under such domain name. Indeed, as noted, Respondents� website established at the address is currently inactive and is devoid of any content. The Complainants submit that upon information and belief, the Respondents have never used any trademark or service mark similar to the said domain name by which they may have come to be known, nor have the Respondents made use of the said domain name in connection with any legitimate business, and the Respondents are not making a protected non-commercial use of the said domain name.
The Complainants repeat the submission that the said domain name is identical and confusingly similar to the Complainants� said trademarks and service marks and that said marks are famous marks.
The Complainants further submit that the Respondents were undoubtedly aware of the Complainants� said trademarks and service marks prior to registration of the said domain name.
The Complainants further submit that because the Respondents had constructive notice of the CITIBANK mark when they registered a domain name that was nearly identical and confusingly similar to that mark, the Respondents have no rights or legitimate interests in the said domain name. In this regard the Complainants refer to the decision in eBay Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (April 11, 2001) in which the administrative panel stated: "Where a Respondent has constructive notice of a trademark, and yet registers a confusingly similar domain name thereto, the Respondent cannot be said to have a legitimate interest in the domain name."
The Complainants further submit that because of the extensive similarity between the said domain name and the Complainants� CITIBANK mark, and because of the identity between the said domain name and the name of Complainants� CITIBANK ONLINE service, individuals confronting the said domain name are likely to be confused, and to believe that the Respondents, their activities, and website are connected or affiliated with, sponsored or endorsed by, or emanate from Complainants.
In support of this submission, the Complainant refers to the decisions of the administrative panels in the following cases: Barnes & Noble College Bookstores, Inc. v. Jerry Riley, WIPO Case No. D2001-1330 (March 26, 2001) (finding that respondent used the domain name to "lure Internet users to its . . . website by creating confusion with complainant�s famous marks"); eBay Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (April 11, 2001) (finding no legitimate rights or interests where respondents had "no plausible reason to include . . . [complainant�s mark] in their domain names other than to capitalize on the goodwill of" complainant).
The Complainants submit that they have not given Respondents any license, permission or authorization by which Respondents could own or use any domain name registrations incorporating the above trademarks and service marks. In this regard the Complainants refers to the decisions of administrative panels in Yahoo! Inc. v. Syrynx Inc., WIPO Case No. D2000-1675 (January 30, 2001) (finding absence of license or permission to use complainant�s YAHOO! marks shows respondent had "no actual or contemplated bona fide or legitimate use of the domain names") (citing Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (March 21, 2000) (same)); Nokia Corp. v. N, WIPO Case No. D2000-0102 (April 18, 2000) (finding absence of license permitting respondent to use complainant�s trademark in domain name evidence of respondent�s illegitimate interests); Barnes & Noble College Bookstores, Inc. v. Jerry Riley, WIPO Case No. D2001-1330 (March 26, 2002) (finding no legitimate interest in domain name where complainant did not permit respondent to use its BARNES AND NOBLE Mark).
In addition to the foregoing, the Complainants submit that the Respondents have no rightful claim to the said domain name, given that "the �biz� TLD imposes greater restrictions on the legitimate use of its domain names than does the �.com� TLD." In support of this assertion the Complainants refer to the decision of the administrative panel in Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571 (August 6, 2002) (finding no legitimate use of respondent�s domain name which incorporated complainant�s NASDAQ mark). The Complainants further submit that as noted above, the Respondents violate the RDRP�s requirement that the said domain name be used primarily for a bona fide business or commercial purpose by operating an inactive website that is lacking in content, and demonstrating no intention to make such a bona fide use in the future.
The Complainants further submit that the Respondents registered and are using the said domain name in bad faith. (UDRP, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3)). The Complainants submit that this is evidenced by the facts that (1) Respondents manifestly knew or should have known of the Complainants� ownership and the fame of its CITI and CITIBANK marks, as well as the CITIBANK ONLINE service, at the time of the registration and therefore, by registering and using the said domain name, the Respondents intentionally attempted to capitalize on and create a likelihood of confusion with the Complainants� marks and services; (2) the website established at said domain name address offers no meaningful content; (3) the Respondents� registration and use violates the specific representations made by the Respondents in the Registration Agreement; and (4) the Respondents have provided false or incorrect contact information to the Registrar.
The Complainants submit that the Respondents� constructive knowledge of the Complainants� CITIBANK mark in particular and the Complainants� said trademarks and service marks in general is more than sufficient to support a finding of bad faith registration. See Citigroup Inc. v. Lee Yunki, WIPO Case No. D2002-0042 (April 23, 2002) ("Given the undoubted worldwide fame of the [CITICARD] Trademark, the inference that the [] domain name was registered in bad faith is irresistible."); see also Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (given the complainant�s numerous trademark registrations and reputation in TELSTRA, it was "not possible to conceive of a plausible situation in which the Respondent would have been unaware of [the complainant�s mark] at the time of registration"); NIKE, Inc. v. Jaeik Jung, WIPO Case No. D2000-1471 (December 30, 2000) (given that the complainant�s trademarks are "one of the most recognizable brands on the planet," unless "Respondent can establish that it has some legitimate interest in the names, it beggars belief that the registrations of the domain names could have been in good faith"); PepsiCo, Inc. v. "null," WIPO Case No. D2002-0562 (July 30, 2002) ("blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith registration").
The Complainants further submit that a determination of bad faith is particularly appropriate in the present Administrative Proceeding given the Complainants� prominence worldwide and in the Middle East. In this regard the Complainants cite the decisions of the administrative panels in Xerox Corp. v. Stonybrook Invs., Ltd., WIPO Case No. D2001-0380 (May 22, 2001) (finding it "very unlikely, if not nearly impossible, that, when Respondent registered [or acquired] the domain name, it wasn�t aware that it was infringing on Complainant�s trademark rights") and Prada S.A. v. Cybershop Co., WIPO Case No. D2002-0662 (September 5, 2002) (finding bad faith where panel could infer respondent�s awareness of the PRADA trademark based on the international fame of that mark).
Given the fame of the Complainants� said trademarks, including the CITIBANK mark, as well as the wide promotion and use of the CITIBANK ONLINE service, the Complainants submit that Internet users are likely to be induced to believe that the said domain name connects to a website associated with or sponsored by the Complainants. In support of this assertion the Complainants refer to the decision of the administrative panels in Compagnie Générale des Etablissements MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504 (August 1, 2002) (finding bad faith where the respondent appropriated the complainant�s well known MICHELIN mark, which indicated that the respondent knew the trademark in question and wished to divert the public to his home page, taking advantage of the reputation of the MICHELIN trademark); Nike, Inc. v. Bestinfo, WIPO Case No. D2002-0543 (September 8, 2002) (finding bad faith due to the fame of the NIKE mark and the respondent�s registration of domain name, despite the strong reputation of the NIKE mark).
The Complainants submit that a mistake is particularly likely given that numerous Internet users who attempt to access Complainants� services by typing CITIBANK ONLINE into their Internet browser will instead reach the Respondents� website. See, e.g., "Web Branding Takes Hold As Direct Navigation Is Most Popular Method For Delivering Users To Web Sites," located at "" (reporting that a majority of internet users currently navigate the world wide web by directly typing a company name into the web browser, and not by using a search engine or web links). A copy of this article is provided as an annex to the Complaint.
The Complainants further submit that a finding of bad faith on the part of the Respondents is further supported by the fact that the Respondents are currently making no use of the domain name. Such conduct routinely is construed as bad faith conduct by administrative panels. In support of this argument the Complainants refer to the decision of the administrative panel in Compañía de Radiocomunicaciones Móviles S.A. v. Argentina Web Design, WIPO Case No. D2000-0914 (October 5, 2000) (where there was "no effective use" of the website corresponding to the domain name and respondent had "no real Internet presence," it was reasonable to conclude "that the registration has most likely been made with no other purpose but to . . . force the complainants into transfer-for-price negotiations"); Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (finding bad faith from passive holding where complainant�s mark was famous, respondent had not made good faith use of the mark, and respondent provided false contact information); Nike, Inc. v. Bestinfo, WIPO Case No. D2002-0543 (September 8, 2002) (finding bad faith where respondent passively held the domain name).
The Complainants furthermore submit that the Respondents� violation of the RDRP, as established above, further contributes to a finding of bad faith registration and use under the UDRP. See Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571 (August 6, 2002) ("violating the RDRP�s restrictions on the registration and use of ".BIZ" domain names can contribute to a finding of bad faith registration and use under the Policy"). As explained fully above, the Respondents violate the RDRP because said domain name, the subject of this Administrative Proceeding, is not being used primarily for bona fide business or commercial purpose. Accordingly, such violation constitutes bad faith registration and use of the said domain name.
In addition, according to the Registration Agreement, the Respondents were required to represent that "neither the registration of the domain name, nor the manner in which it will directly or indirectly [be] used, infringes the legal rights of any third party." The Complainants state that the Respondents could have easily conducted a trademark or domain name search to ensure that the said domain name did not infringe on the Complainants� trademark rights. Had the Respondents conducted even a preliminary search, they would have found the Complainant�s CITIBANK registrations, as well as Complainants� and domain name registrations, along with numerous other CITI marks and domain name registrations featuring the letters CITI owned by Complainants.
The Complainants submit that such a failure to conduct a trademark search is evidence of bad faith. In support of this argument the Complainants cite the decisions of the administrative panels in Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002) (citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000)); Dell Computer Corp. v. Logo Excellence, WIPO Case No. D2001-0361 (May 7, 2001) (finding bad faith and an intent to misappropriate and financially benefit where complainant�s DELL marks were registered prior to respondent�s registration of the domain names).
In addition, it is alleged that the Respondents materially breached the Registration Agreement by providing the Registrar with what the Complainants submit is obviously false contact information and that such failure to provide accurate contact information further supports a finding of bad faith as held by the administrative panel in Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (finding bad faith where "Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement."). Specifically, in the present reference the postal code of "1234567" provided by the Respondents is obviously fictitious and incorrect. In addition, listing "Zouk Michael" as both the Respondents� address and city is likely incorrect and similarly misleading.
B. Respondent
There was no Response filed.
6. Discussion and Findings
The Complainants request that this Administrative Panel issue a decision that the domain name be transferred to the First Named Complainant pursuant to paragraph 4 of the RDRP and paragraph 4 of the UDRP.
To satisfy the test in paragraph 4(a) of the RDRP, the Complainants must establish that said domain name is not being or will not be used primarily for a bona fide business or commercial purpose.
Furthermore to satisfy the test in paragraph 4(a) of the UDRP, the Complainants must establish that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the said domain name; and
(iii) the domain name was registered and is being used in bad faith.
Addressing the test under the RDRP, it is clear from the excellently presented and supported Complaint, that the Complainants own a substantial number of registered service marks and trademarks incorporating the letters CITI and CITIBANK. It is also clear that the Complainants group of corporations have a worldwide reputation in the use of its trademark and service mark CITIBANK.
This reputation has been enhanced by the establishment of online banking services by the Complainants on the website established at the URL .
The Complainants have not granted any licence, authority or permission to the Respondents to use the CITIBANK trademark, or to use the mark or domain name CITIBANKONLINE.
It is inconceivable that the Respondents were not aware of the Complainants� well established reputation in the use of the CITIBANK trademark when they registered the said domain name. It is further most unlikely that the Respondents had no knowledge of the Complainants� CITIBANK ONLINE Internet banking services and the domain name. As the Complainants have argued, any brief search would have shown the existence of the Complainants, their trademarks and their CITIBANK ONLINE services.
There is nothing in the circumstances surrounding this registration to indicate that it would be possible for the Respondents to make any bona fide use of the said domain name to establish a website to exchange goods, services, or property of any kind, otherwise in the ordinary course of trade or business or to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business. Any such use would not by definition be bona fide as it would inevitably cause a conflict with the Complainants� prior rights in its trademarks.
Moving on to the tests under the UDRP, it is clear to this Administrative Panel that said domain name is identical to the Complainants� CITIBANKONLINE service mark. Furthermore said domain name incorporates, in its entirety, the Complainants distinctive CITIBANK registered service marks and is therefore confusingly similar to the said CITIBANK marks in which the Complainants have rights.
For the reasons given above in discussing the test under the RDRP, it is clear that the Respondents have no rights or legitimate interests in respect of the said domain name.
Because the Respondents must have known of the Complainants� reputation in the trademark CITIBANK, and because they must also have known that the Complainants had established a successful business through their website at , it is clear that the registration by the Respondents of the said domain name was made in bad faith.
This Administrative Panel accepts the argument of the Complainants that given the established reputation of the Complainants� said registered service marks and trademarks, including the CITIBANK mark, as well as the wide promotion and use of the CITIBANK ONLINE service by the Complainants, Internet users are likely to be induced to believe that the said domain name resolves to a website associated with or sponsored by the Complainants.
Having considered the submissions made in the Complaint and in the absence of any Response, this Administrative Panel is satisfied that on the balance of probabilities the Respondents have registered said domain name either primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants for valuable consideration in excess of the Respondents� documented out-of-pocket costs directly related to the said domain name; or else, with a view to establishing a website or link at that address to attract, for commercial gain, Internet users to the Respondents� website or other on-line location, by creating a likelihood of confusion with the Complainants� mark as to the source, sponsorship, affiliation, or endorsement of the Respondents� website or other linked website or location. For these reasons this Administrative Panel is satisfied that the said domain name has been registered and is being used in bad faith.
In reaching the decision that the said domain name was registered and is being used in bad faith, this Administrative Panel is also conscious that the Respondents have not established any website at said domain name address.
7. Decision
For the reasons set out above, this Administrative Panel is satisfied on the balance of probabilities that said domain name is not being or will not be used primarily for a bona fide business or commercial purpose, that said domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights, that the Respondents have no rights or legitimate interests in respect of the said domain name and said domain name was registered and is being used in bad faith.
With specific reference to Paragraphs 4(i) of the RDRP, 4(i) of the UDRP and paragraph 15 of the UDRP Rules, this Administrative Panel therefore directs that the said domain name be transferred to the First Named Complainant.
James Bridgeman
Sole Panelist
Dated: August 2, 2003
Full & Egal Universal Law Academy