WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citigroup Inc. v. Lee Yunki
Case No. D2002 - 0042
1. The Parties
The Complainant in this administrative proceeding is Citigroup Inc., a Delaware corporation with its principal place of business at 399 Park Avenue, New York, New York 10043, U.S.A.
The Complainantís authorized representative is Ronald J. Turiello, Jr., of Skadden, Arps, Slate, Meagher & Flom, LLP, of Four Times Square, New York, New York 10036, U.S.A.
The Respondent is Lee Yunki, of 99 oduck chunghwa, puyo, chungnam 323-860, South Korea.
2. The Domain Name and Registrar
The domain name in issue is <citicard.com> ("the Domain Name").
The Registrar of the Domain Name is BulkRegister.com, of 10 E. Baltimore, Suite 1500, Baltimore, Maryland 21202, U.S.A.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on January 17, 2002 an e-mail version of a Complaint and on February 13, 2002 hard copies of an Amended Complaint and accompanying documents. The Center verified that the Amended Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"). The Complainant made the required payment to the Center. On February 15, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On January 24, 2002, the Center transmitted via e-mail a request for registrar verification in connection with this case. On January 28, 2002 BulkRegister transmitted via e-mail to the Center its Verification Response, stating that the registrant is citicard.com, of 99 oduk chunghwa, puyo, chungnam 323-860, KR
and that the Administrative and Technical Contacts are as follows:
lee yunki < mailto:galloper@INAME.COM>
99 oduk chunghwa
The confusing situation revealed by the Centerís enquiry of BulkRegister is clarified by the Complainantís submissions, at paragraph 5.A.(vii) to (xi) below.
No Response has been filed by the Respondent. The Center sent notification of the Complaint to the Respondent by e-mail at his e-mail address, <mailto:email@example.com>, and to <citicard.com> (which is nominally the Registrant of the Domain Name) at the address < mailto:firstname.lastname@example.org>. The notification to the Respondent appears to have been received, but the latter address was described as having a "permanent fatal error". It is, of course, the Respondentís responsibility to provide accurate addresses Ė so far as the Center is concerned, it complied with paragraph 2(a) of the Rules. Notification of Respondent Default was sent on March 11, 2002, and appears to have been successfully transmitted to the Respondent.
On April 10, 2002 this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by April 24, 2002.
4. Factual Background
(a)The Complainant owns, through its subsidiary, Citicorp, U.S. Trade Mark No. 1,024,861 protecting the mark CITICARD ("the Trade Mark"). This was originally granted to First National City Bank on November 11, 1975. The Trade Mark has also been registered in 37 other countries, including South Korea.
(b)The Complainant, through its subsidiary Citibank, N.A. owns the domain name <citicards.com>, registered on November 18, 1999.
(c)The Domain Name was registered on February 7, 2000.
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:
(i) The Complainant is the world-renowned financial services company that, through its wholly owned subsidiaries Citicorp and/or Citibank, N.A., owns an extensive family of famous CITI and CITI-prefixed service marks and trademarks (the "CITI Marks"), including such famous marks as the Trade Mark, CITI, CITIBANK, CITICORP, CITIGROUP, CITIBANKING, and THE CITI NEVER SLEEPS. From 1994 through 2000, the Complainant has spent in excess of $3 billion advertising its CITI family of marks throughout the world and in 2000 alone generated over $ 77.6 billion in net revenues using its CITI family of marks, including the Trade Mark in connection with its financial services.
(ii) The Complainant was formed on October 8, 1998, following the business combination between two well-known companies, Citicorp and Travelers Group Inc. The Complainant provides 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, travelers checks, mortgages, bill payment services, brokerage services and investment advisory services.
(iii) The Complainant has an active presence worldwide, and provides services throughout Asia, including in Korea, where it operates 12 Citibank branches. Furthermore, the Complainant has registered 6 domain names in Korea, including <citicard.co.kr>.
(iv) In June 2001, the Complainant learned that the Respondent had registered the Domain Name with Network Solutions, Inc. The Domain Name was registered by the Respondent on February 7, 2000. Until recently the "citicard.com" web site featured a blank screen with two hypertext links. The first hypertext link, labeled "US Citibank cards members" directed users to one of Citibank's Internet web sites for its credit card customers. The only other link on the <citicard.com> web site was a link to <sportsbetting.com>, an Internet gambling site. In the event that the user did not click on either of the aforementioned hypertext links, within approximately 10-15 seconds, the user was automatically redirected to the <sportsbetting.com> web site. Aside from the Respondent's use of the Trade Mark in the Domain Name, the Respondent made no other use of the Trade Mark on his web site.
(v) Upon information and belief, the Respondent received a referral fee from <sportsbetting.com> for each user he automatically directed to <sportsbetting.com> who gambled on that site. According to the <sportsbetting.com> referral fee policy, the Respondent would have received from 25% to 50% of all net "house" profits <sportsbetting.com> earned from the members the Respondent directed to the site.
(vi) The Complainant conducted a WHOIS query of domain names registered by the Respondent on December 11, 2001, which search uncovered over 150 names. In addition to Citigroup, many of the Respondent's registered domain names feature the names or marks of well-known corporations including Nike, Microsoft ("Windows"), Singapore Airlines, Samsung and well-known Korean banks such as Nation Bank, Hana Bank, and Han Mi Bank.
(vii) On June 28, 2001, the Complainant's Representative sent a cease and letter to the Respondent by electronic mail and Federal Express to the address listed in the WHOIS directory. The letter asserted the Complainant's rights in and to the Trade Mark, stated that the Respondent's registration and use of the Domain Name created a likelihood of confusion between the parties, and demanded that the Respondent immediately stop using the Domain Name and relinquish rights to and assign the Domain Name to Complainant. The hard copy of the letter was returned to the Complainant's Representative as undeliverable, because the Respondent did not reside at the address listed in the WHOIS directory. The electronic version of the letter, however, evidently was received by the Respondent, because he then modified the Domain Name Site in response to one of the Complainant's objections. Specifically, the Respondent removed the link to Citigroup's web site.
(viii) On August 23, 2001, the Complainant's Representative sent a follow-up cease and desist letter (the "8/23 Letter") to the Respondent by electronic mail, again asking that the Respondent immediately cease all use of the Domain Name and transfer to Citigroup the Domain Name. The Complainant included the necessary paperwork to effect transfer of the Domain Name and stated that it would bear the expense of transferring the Domain Name.
(ix) The Complainant also hired the South Korean law firm of Kim & Chang ("South Korean Representative") to locate the Respondent's true address and hand deliver a hard copy of the letter. On August 28, 2001, the Complainant's South Korean Representative attempted to deliver the 8/23 Letter to the address listed in the WHOIS directory. The Respondent's parents resided at the listed address and provided Complainant's South Korean Representative with the Respondent's current address, telephone number and mobile telephone number. On August 29, 2001, the Complainant's Representative served the 8/23 Letter on Respondent by hand delivery at his updated address: #1013 Hyundai Goldentel, 1337-2, Seocho-2-dong, Seocho-ku, Seoul, Korea. The Respondent personally signed for and received the letter.
(x) The Respondent never responded to either cease and desist letter. Shortly after the Respondent received the second letter, however, the Domain Name Site was disabled, evidently in response to the Complainant's correspondence. Currently, the Domain Name Site remains inactive and automatically redirects users to the Respondent's inactive <cardnow.com> website.
(xi) On January 17, 2002 at 15:56, The Complainant's Representative simultaneously e-mailed a copy of the Complaint to the Center, to Network Solutions (the listed Registrar at that time) and to the Respondent. On January 17, 2002 at 18:34 the Respondent switched his Registration for the Domain Name from Network Solutions to BulkRegister.com, evidently in an effort to avoid this proceeding.
(xii) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the website. In particular, the Respondent used the Domain Name to automatically redirect the Complainant's customers to the <sportsbetting.com> web site from which the Respondent was eligible to receive a referral fee for those consumers who gambled on the linked site.
As noted above, no Response has been filed.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN Policy, as follows:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
As to element (i), the Domain Name is plainly identical to the Trade Mark.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that he has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name). The facts put forward by the Complainant suggest that the Respondent's interest in the Domain Name was not in connection with a bona fide offering of goods or services, but rather to take advantage of the reputation of the Complainant's Mark to attract potential customers to his own Internet site, deriving income from those who, having been referred on to the "sportsbetting.com" web site, then proceeded to gamble on that site. In the absence of any justification from the Respondent of his activities in relation to the Domain Name, the Panelist concludes that the Complainant has established element (ii).
So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the ICANN Policy applies.
Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as follows:-
"by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location, or of a product or service on [respondent's] web site or location."
Given the undoubted worldwide fame of the Trade Mark, the inference that the Domain Name was registered in bad faith is irresistible. The fact that the Respondentís web site originally included a link to the Complainantís web site <citigroup.com> merely underlines that the Respondent was fully aware of what he was doing. In the light of the circumstances alleged in paragraph 5(A)(iv) and (v) above it is clear that the Respondent's activities come within the terms of (iv) of paragraph 4(b) of the Policy. If further evidence of the Respondentís bad faith were required, that is provided by his failure to provide Bulk Register with contact details which are sufficient to locate him (other than by e-mail).
The Panelist therefore concludes that the Respondent registered and has been using the Domain Name in bad faith.
In the light of the findings in paragraph 6 above, the Panelist concludes that:-
- the domain name <citicard.com> is identical to the trade mark CITICARD of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the Domain Name <citicard.com> be transferred to the Complainant, Citigroup Inc.
Dated: April 23, 2002