WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citigroup, Inc. v. Joseph Parvin
Case No. D2002-0969
1. The Parties
The Complainant is Citigroup Inc. of New York, United States of America.
The Respondent is Joseph Parvin of Princeton Junction, New Jersey, United States of America.
2. The Domain Names and Registrar
<citifinance.com>, <cititravel.biz>, <cititravel.com>, <cititravel.info>, <cititravel.net>, <cititravel.org> are registered with eNom.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by email on October 18, 2002, and in hardcopy form on November 4, 2002.
On October 21, 2002, the Center transmitted via e-mail a request for registrar verification in connection with this case. On October 22, 2002, eNom 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 30, 2002. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"); and the Restrictions Dispute Resolution Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "RDRP") and the Supplemental Rules for Restrictions Dispute Resolution Policy for ".BIZ" ("the Supplemental RDRP Rules").
On November 5, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced and that the due date for Response was November 25, 2002. On November 22, 2003, the Respondentís representative asked for an extension of time to file a Response. An extension of time was granted until December 5, 2002. The Response was filed with the Center on December 5, 2002. The Respondent requested a three-member Panel. In this connection, the Center appointed Henry H. Perritt, Jr., G. Gervaise Davis III and Jette Robsahm as panelists in this matter on February 7, 2003. 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.
The Panel notes that unavoidable delays have occurred in this case due to the need to substitute a new Panel member because of a potential conflict, and due to several other factors beyond the control of the Panel and the Center.
4. Factual Background
The Complainant, Citigroup Inc., is the well known 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 CITI, CITICARD, CITIBANK, CITICORP, CITIGROUP, CITIBANKING, and THE CITI NEVER SLEEPS. Complainant's CITI service mark, U.S. Reg. No. 1,181,467 (incontestable status), 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.
Complainant claims its CITI Marks have been famous since at least 1980, and today the family includes more than 140 federally registered marks or applications.
Complainant was formed on October 8, 1998, following the business combination between two well known companies, Citicorp and Travelers Group Inc. This business combination was announced to the public on April 6, 1998, six days prior to the Respondent's registration of the <citifinance.com> and <cititravel.com> domain names.
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, travel-related services, mortgages, bill payment services, brokerage services and investment advisory services, worldwide, and in the United States, including in New Jersey, where Respondent resides. Complainant operates approximately 30 CitiFinancial branches in New Jersey and operates approximately 40 Citibank branches within 45 miles of Respondent's listed address.
Complainant has applied for federal registration of CITIFINANCE for financial services, namely consumer lending, mortgage brokerage, credit and financing services and credit insurance services (U.S. App. No. 75622174, filed on January 15, 1999), and for CITIFINANCIAL for financial services, namely consumer lending, mortgage brokerage, credit and financing services and credit insurance services (U.S. App. No. 75622169, filed on January 15, 1999).
Since as early as March 1980, Complainant claims to have offered throughout the United States and worldwide, a variety of travel-related services, under marks comprised of and/or featuring CITI and/or CITICORP, including, without limitation, the following: CITICORP TRAVELERS CHECKS, U.S. Reg. No. 1380723 (incontestable status); CITICORP & TRAVELERS CHECK DESIGN, U.S. Reg. No. 1401133 (incontestable status); CITIMILES, U.S. Reg. No. 1878857 (incontestable status); CITIPRIVILEGES, U.S. Reg. No. 2361978 (registered June 27, 2000, first used in commerce August 2, 1999), and CITIAGENT, U.S. Reg. No. 2218621. Complainant's federal registration for the CITIPRIVILEGES mark is for travel transportation reservation services, discount travel transportation reservation services, arranging travel tours, ticket reservations for shows and entertainment events, and hotel lodging reservation services, discount travel lodging reservation services, hotel reservation services.
A March 23, 2003, search of the USPTO database shows 120 records with the string "CITI" in them. Only some of the records pertained to Complainant. The remainder pertained to unrelated parties.
Complainant is the owner of numerous domain name registrations featuring CITI, including <citifinancial.com> (registered March 17, 1999), as well as approximately 800 domain names featuring the CITI Mark, including <citi.com> (registered December 29, 1998), <citicorp.com> (registered August 31, 1989), <citibank.com> (registered February 2, 1991), and <citigroup.com> (registered April 6, 1998).
With respect to Respondentís claims, the Panel notes that Respondentís <citifinance.com> Domain Name was registered on April 12, 1998; the <cititravel.com> domain name was registered on April 12, 1998; the <cititravel.net> domain name was registered on March 30, 2000; the <cititravel.org> domain name was registered on December 16, 2001; the <cititravel.biz> domain name was registered on November 16, 2001; and the <cititravel.info> domain name was registered on December 17, 2001. The .biz and .info TLDís did not exist until sometime in 2001.
On March 23, 2003, the "www.citifinance.com" URL produced a "The Page Cannot Be Displayed" error. The "www.cititravel.com" URL produced a page of travel advertisements and a link for "travel domains for sale." The <cititravel.biz>, <cititravel.net> and <cititravel.info> URLís (when not preceded by www.) resolved to <cititravel.com>. The "www.cititravel.org" URL produced a generic "This site is planned for development" page.
5. Partiesí Contentions
Complainant asserts trademark registrations and applications as set forth in the Factual Background.
Complainant has used CITITRAVEL for travel-related services as a common law mark since as early as 1986.
Complainant claims to have spent in excess of $3 billion advertising its CITI Marks throughout the world from 1994 through 2000. In 2000 alone, Complainant generated over $77.6 billion in net revenues under or in connection with its CITI Marks in connection with its financial and related services.
Respondent's "www.citifinance.com" website currently features a blank screen with no content. Previously, Respondent's "www.citifinance.com" website featured advertisements for finance related websites such as "www.wallstreetjournal.com" and "www.lendingtree.com", and prominently displayed the following statement: "Welcome to CitiFinance (aka <citifinance.com>). This web name and site are available for sale!" In connection with this offer for sale, Respondent highlighted the term CITI in a different color on the website.
Respondent's "www.cititravel.com" website features a link for "Travel Domains for Sale", listing numerous domain names for sale, as well as advertisements for travel related services. The following domain names, which Respondent registered, automatically redirect an Internet user to the "www.cititravel.com" website: <cititravel.net>, <cititravel.org>, <cititravel.info> and <cititravel.biz>. The "www.cititravel.com" website also provides a link to Respondent's "www.firstdomains.com" website, which features hundreds of domain names for sale. Additionally, the "www.firstdomains.com" website features Respondent's contact information for purchase of the domain names.
Complainant conducted a WHOIS query of domain names registered by Respondent on September 11, 2002, which search uncovered hundreds of domain names. Respondent is attempting to sell many of these domain names for profit on its "www.cititravel.com" and "www.firstdomains.com" websites. In addition to Citigroup, many of Respondent's registered domain names, also listed for sale, feature the names or marks of well known corporations including Amazon.com (<amazoncds.com>), Fidelity Investment Services (<fidelitycredit.com>), and Priceline.com (<epriceline.com>).
Additionally, Respondent has been involved in several domain name disputes, including in United States federal court and in a UDRP proceeding. Most of these ordered Respondentís domain names to be transferred.
On March 9, 2001, Complainant's Representative sent a cease and desist letter to the Respondent by overnight mail at the address listed in the WHOIS directory. The letter set forth Complainant's rights in and to the CITI mark and CITI- Marks, explained that Respondent's registration and use of the <citifinance.com> Domain Name created a likelihood of confusion between the parties, and demanded that Respondent immediately stop using the <citifinance.com> Domain Name and assign such domain name to Complainant. 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.
On October 2, 2001, Complainant's Representative sent Respondent another cease and desist letter by hand delivery, return receipt requested at his address: 9 Brendan Place, Princeton Junction, New Jersey, U.S.A. Respondent personally signed for and received the letter.
Respondent never responded to either cease and desist letter. On January 24, 2002, and February 13, 2002, Complainant's Representative attempted to contact Respondent by telephone. On February 20, 2002, Respondent telephoned Complainant's Representative, but Respondent was unresponsive to engaging in a conversation regarding the <citifinance.com> Domain Name.
After receiving Complainant's cease and desist letters, Respondent altered the "www.citifinance.com" website to remove all content from the site. Currently, the "www.citifinance.com" website does not resolve to an active website.
Respondent's domain names are Nearly Identical or Virtually Identical and are Confusingly Similar to Complainant's CITI Marks
Respondent's Domain Names for the <citifinance.com> and the <cititravel.com>, <cititravel.org>, <cititravel.net>, <cititravel.info> and <cititravel.biz> Domain Names (collectively, the "CitiTravel Domain Names") are nearly identical and are confusingly similar to marks in which the Complainant has prior and superior rights. Specifically, Respondent's registrations for the Domain Names appropriate Complainant's internationally famous CITI mark and CITI Marks, including its CITIFINANCE and CITIFINANCIAL marks, and Complainant's corresponding domain names thereunder.
Respondent's Domain Names fully incorporate Complainant's famous CITI mark. Accordingly, such Domain Name registrations are confusingly similar to Complainant's famous CITI mark. "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." Eauto, LLC v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000) (finding confusing similarity between <eautolamps.com> domain name and Complainant's EAUTO mark); see Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 (August 27, 2002) (finding <bmwcar.com> domain name confusingly similar to Complainant's BMW mark due to the incorporation of Complainant's entire registered mark in the domain name).
Moreover, Panels routinely find confusing similarity where a domain name is merely the combination of a generic word, such as "finance" or "travel" here, with a famous and distinctive mark, such as CITI. See Prada S.A. v. Cybershop Co., WIPO Case No. D2002-0662 (finding confusing similarity where <pradasports.com> domain name was comprised of complainant's PRADA mark and the generic word "sports"); Nokia Corp. v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (April 18, 2000) (finding confusing similarity where <nokiagirls.com> domain name was comprised of Complainant's NOKIA mark and the generic word "girls").
Indeed, the addition to Complainant's CITI mark by Respondent of the words "finance" and "travel", cannot dispel confusion here because such words merely refer to services which Complainant provides under its CITI Marks. See, e.g., Compagnie Générale des Etablissements MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504 (August 1, 2002) (strong confusing similarity between <michelinair.com> domain name and Complainant's MICHELIN mark, where Complainant sold tires under the mark); Nike, Inc. v. Bestinfo, WIPO Case No. D2002-0543 (September 8, 2002) (confusing similarity between <nikeshoes.com> and Complainant's NIKE mark, where Complainant sold shoes under the mark).
Respondent Has No Rights or Legitimate Interests in the Domain Names
The Respondent has no rights or legitimate interests in the Domain Names. Complainant has found no evidence that Respondent has ever been commonly known by "citifinance" or "cititravel", or that Respondent operates a legitimate business under such domain name. Indeed, Respondent's "www.citifinance.com" website is currently inactive, and his "www.cititravel.com" website features third-party advertisements, not content, and advertises a link for domain names for sale. Further, Respondent's "www.cititravel.org", "www.cititravel.net", "www.cititravel.biz", and "www.cititravel.info" websites do not feature any content, but merely redirect the Internet user to Respondent's "www.cititravel.com" website. Upon information and belief, the Respondent has never used any CITI trademark or service mark by which it has come to be known, has not made use of the Domain Names in connection with any legitimate business, and is not making a protected non-commercial use of the Domain Names.
To the contrary, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's CITI Marks as to the source, sponsorship, affiliation or endorsement of the website. In particular, Respondent uses the CitiTravel Domain Names to direct Complainant's customers to Respondent's "www.cititravel.com" website, which features advertisements. See Barnes and Noble Bookstores, Inc. v. Jerry Riley, WIPO Case No. D2001-1330 (March 26, 2002) (respondent used the "www.barnesandnobledigital.com" website to "lure Internet users to its . . . website by creating confusion with Complainant's famous marks."). Respondent is using the Domain Names solely for commercial purposes in order to collect advertising revenues.
As stated above, Respondent's Domain Names are identical and confusingly similar to the Complainant's famous family of CITI Marks. Because of the extensive similarity between the Domain Names and the Complainant's CITI Marks, individuals confronting Respondent's Domain Names are likely to be confused, and to believe that Respondent, his activities, and/or websites are connected or affiliated with, sponsored or endorsed by, or emanate from Complainant. Indeed, Respondent was undoubtedly aware of the CITI Marks prior to registration of the Domain Names, as they are famous. See Ty v. Jospeh Parvin d/b/a Domains for Sale, WIPO Case No. D2000-0688 (Ex. A) (finding that Joseph Parvin's (Respondent's) registration and use of a domain name incorporating famous BEANIE BABY mark was in bad faith).
Complainant has not given Respondent any license, permission or authorization by which Respondent could own or use domain name registrations incorporating the famous CITI mark.
In addition to the foregoing, Respondent has no rightful claim to the <cititravel.biz> Domain Name, given that "the .BIZ TLD imposes greater restrictions on the legitimate use of its domain names than does the .COM TLD." Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571 (August 6, 2002) (finding no legitimate use of Respondentís <nasdaqtrader.biz> domain name which incorporated Complainant's NASDAQ mark). Registrants are explicitly advised of the additional restrictions on the use of .BIZ domain names in their registration agreements. Notwithstanding such heightened standard, as noted above, Respondent's use of this Domain Name serves no purpose other than to redirect an Internet user to the "www.cititravel.com" website.
Respondent Registered and is Using the Domain Names in Bad Faith
As described more fully below, the Respondent registered and is using the Domain Names in bad faith, as evidenced by (1) the fact that Respondent was aware at the time of his registration of Complainant's ownership and the fame of its CITI Marks, (2) Respondent attempted to sell the Domain Name <citifinance.com> on the corresponding website, (3) Respondent's "www.cititravel.com" website features numerous domain names for sale by the Respondent, including domain names incorporating other well known marks, (4) Respondent's "www.citifinance.com" website is currently inactive yet Respondent refuses to transfer such Domain Name to Complainant, and (5) Respondent has engaged in a pattern of conduct which indicates that he registered the Domain Names primarily for the purpose of selling, renting, or otherwise extracting value from the Domain Names based on the goodwill and renown that Complainant has assiduously developed in its CITI Marks.
Given the fame of the CITI family of marks generally, Respondent was or should have been aware of the existence of such marks at all relevant times. Further, given the fame of the CITI Marks, Internet users are likely to be induced to believe that the Domain Names connect to websites associated with or sponsored by the Complainant given the Complainant's extensive use of CITI and the CITI Marks.
By registering and using the Domain Names, Respondent is attempting to trade on the fame of Complainant's Marks and use that fame to divert customers to his websites for commercial advantage, namely through advertising revenue. PepsiCo, Inc. v. "null" aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 (July 30, 2002) ("blatant appropriation of a universally recognized trademark is, of itself, sufficient to constitute bad faith registration").
Moreover, in addition to the fame of its CITI Marks, Complainant's prominence in New Jersey, where Respondent resides, further supports a finding that the Respondent acted in bad faith. As previously stated, Complainant operates 30 CitiFinancial branches throughout New Jersey, and 40 Citibank branches within a 45 mile radius of Respondent.
Respondent has also evinced bad faith registration through his practice of registering domain names which appropriate the names and marks of other well known corporations, such as Gateway Computers, InStyle Magazine, Amazon.com, Fidelity Investment Services, and Priceline.com.
Further, Respondent's registration of multiple Domain Names, all six of which appropriate Complainant's CITI Mark is evidence in itself of bad faith registration and use. "The registration of several names corresponding to Complainant's trademarks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy." General Electric Co. v. Normina Ansalt a/k/s Igor Fyordorov, WIPO Case No. D2000-0452; see also Yahoo! Inc. v. Syrynx, Inc., WIPO Case No. D2000-1675 (January 30, 2001) (registration of multiple domain names incorporating YAHOO! Marks is evidence of Respondent's bad faith and intent to capitalize on Complainant's goodwill); Price Company v. Price Club, aka Tsung-Pei Chang, WIPO Case No. D2000-0664 ("the selection of three domain names that are virtually identical to Complainant's famous mark demonstrates that these were abusive registrations contrary to the Policy"). Respondent's registration of so many domain names using combinations of Complainant's CITI mark and CITIFINANCE mark accordingly evidences "a pattern and a calculated attempt by Respondent to foreclose Complainant from using its own trademarks in cyberspace." The Stanley Works & Stanley Logistics, Inc. v. Camp Creek Co., WIPO Case No. D2000-0113 (April 13, 2000) (finding bad faith where Respondent registered multiple domain names as combinations of the BOSTICH and STANLEY marks).
A finding of bad faith with regard to the registration and use of the <citifinance.com> Domain Name, specifically, is supported by Respondent's attempt to sell such domain name on the "www.citifinance.com" website. Indeed, as noted above, before Respondent deactivated the "www.citifinance.com" website, it stated "Welcome to CitiFinance (aka <citifinance.com>). This web name and site are available for sale!", and featured a link to contact the Respondent to purchase the <citifinance.com> Domain Name. Such conduct routinely is construed as bad faith conduct by Panels. See Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 (August 27, 2002) (finding bad faith where Respondent's website connected to the domain name displayed the statement "This domain name is for sale.").
A finding of bad faith with regard to the <citifinance.com> Domain Name, specifically, is further supported by the fact that Respondent is currently making no use of the website. This supports a finding that Respondent registered and is using such Domain Name in bad faith. See Compaña 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 . . . forc[e]the Complainants into transfer-for-price negotiations"); Nike, Inc. v. Bestinfo, WIPO Case No. D2002-0543 (September 8, 2002) (finding bad faith where Respondent passively held the <nikeshoes.com> domain name).
Finally, in addition to the arguments above, the range of conduct that can constitute bad faith registration and use is broader for .BIZ TLDs. See Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571 (August 6, 2002) (finding Respondent registered and used <nasdaqtrader.biz> domain name in bad faith due to violation of the RDRP). "[V]iolating 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." Id. In the present case, Respondent's <cititravel.biz> Domain Name was registered and is being used in bad faith because it is not being used primarily for bona fide business or commercial purpose, as Respondent certified when registering the <cititravel.biz> Domain Name. Accordingly, Respondent violated the conditions on registration and use of a .BIZ domain name reflected in the eNom Registration Agreement and in the RDRP, and accordingly has acted in bad faith registration with respect to the <cititravel.biz> Domain Name.
1) Regarding the domain names <cititravel.com>, <cititravel.org>, <cititravel.net>, <cititravel.info> and <cititravel.biz>.
The Complaint does not provide adequate proof, evidence or substantiation to prove that the Complainant has trademark rights that are controlling in this proceeding.
The absence of definitive proof of a trademark has been held to be fatal to a Complainantís request for the transfer of a domain name. This principle is espoused in the case of Sari Rattner Dahl Primo Incense v. Spring.net, NAF Case No. FA0096565 (April 12, 2001) in which the Complainant similarly did not present adequate evidence of trademark rights. The decision in the case holds that the Complainant "wholly failed to demonstrate that it has trademark rights" as follows: Complainant alleges that it owns a trademark for CITI. Citigroup, Inc., however, is not the legal entity which owns the registration for this mark. The legal entity which owns the registration is Citicorp. Although the Complainant makes the unsupported allegation that it owns numerous marks "through its wholly owned subsidiaries Citicorp and/or Citibank, N.A.," there is absolutely no support or proof of this allegation. Accordingly, Complainantís Complaint should fail because it has not proven that it does have registered trademark rights.
In addition to the absence of any proof of a registered trademark, there is not adequate proof of any common law trademark rights. The only "proof" of common law trademark rights in the word CITITRAVEL is one sentence in Paragraph 6 of the Complaint that states "[a]dditionally, Complainant has used CITITRAVEL for travel-related services as a common law mark since as early as 1986." The determination of common law trademark rights is a complex process. In judicial proceedings the evidence to support common law trademark rights is typically in the form of extensive surveys of public opinion conducted by survey experts to determine whether the public associates the word with the entity attempting to prove common law trademark rights. Certainly one sentence making a conclusory allegation does not provide sufficient evidence to support a finding of common law trademark rights.
Protectable trademark rights at common law are initially premised upon secondary meaning. "Secondary meaning is demonstrated where in the minds of the public, the primary significance of a product feature or term is to identify the source of the product itself." Among the factors to be considered on the question whether a mark or name has attained a secondary meaning are the length of use, exclusivity of use, any copying, and actual confusion Id. The Complainant has therefore failed to demonstrate that the public sees the phrase primarily as a means of identifying the product. Moreover, to whatever extent the word CITI is distinctive or has otherwise achieved secondary meaning, it is not exclusively, or even primarily, through the efforts of the Complainant. See Value House v. Phillips Mercantile, Co., 523 F.2d 424, (10th cir. 1975) which states that:
"under common lawÖthe rights to a trademark grows out of use and not out of the adoption of a trademark."
The application of these principles to UDRP cases has been made clear by a number of cases, including Powrachute, Inc. v. Buckeye Industries, e Res Case No. AF-0076 a, b,c,d (May 3, 2000) (mere act of incorporation does not create trademark), and Millennium Broadcasting Corp. v. Publications France Monde/Hachette Filipacchi Presse, NAF Case No. FA0096116 (January 23, 2001) (registration of a domain name does not generate trademark or service mark rights in favor of registrant).
Many other entities that have trademarks which consist of the four letters CITI or incorporating the four letters CITI, a sampling of which is provided in an exhibit to the Response. In addition, Complainantís alleged trademark rights to CITI are for the specific services enumerated by Complainant, namely financial services. Respondent was utilizing the four letters CITI for much different services. Certainly a trademark in four letters for limited services should not permit a trademark owner to take away all domain names containing the four letters Ė especially when there are other trademark owners that have obtained trademark rights in the four letters.
Since Complainant herein has not provided adequate proof of trademark rights, the Complaint fails to prove the first element that is required to obtain the transfer of the domain names <cititravel.com>, <cititravel.org>, <cititravel.net>, <cititravel.info> and <cititravel.biz>.
2) Regarding the domain name <citifinance.com>:
Complainant alleges that it owns a federal application for CITIFINANCE. Complainant alleges that it owns a trademark for CITI. The Complainant, Citigroup, Inc., however, is not the legal entity which owns the registration for this mark. The legal entity which owns the registration is Citicorp. Although the Complainant makes the unsupported allegation that it owns numerous marks " through its wholly owned subsidiaries Citicorp and/or Citibank, N.A.," there is absolutely no support or proof of this allegation. The Complainant is requesting that this Panel make a decision to require the transfer of the domain names to itself Ė while a separate, distinct entities own the trademark registrations upon which the Complainant is relying. Accordingly, Complainantís Complaint should fail because it has not proven that it has trademark rights.
Certainly a trademark application does not give an applicant trademark rights. The application must pass through a lengthy procedure of examination and challenge before trademark registration rights are granted by the USPTO. In fact, a review of the history of the application submitted in 1999 indicates that there have been considerable difficulties encountered in the process of obtaining trademark registration for both CITIFINANCE and CITIFINANCIAL.
Respondent also points out that the citifinance trademark application was initiated after the Respondentís registration of <citifinance.com> and action was suspended.
Furthermore, a citifinancial trademark application was initiated after the Respondentís registration of <citifinance.com> and action was suspended.
A CitiFinancial trademark application was made after Respondentís registration of CitiFinance and action was suspended.
City Holding Company holds a trademark on City Financial Corporation.
City Holding Company also owns a trademark on City Financial Center.
Complainant does not allege any common law trademark rights with respect to CITIFINANCE. If Complainant alleged common law trademark rights, it would be necessary for Complainant to provide substantial proof. Even with substantial proof there is a question of whether a UDRP panel should engage in the determination of complex trademark disputes
Without repeating all of the arguments presented above with respect to the CITITRAVEL those arguments apply to this issue with respect to the <citifinance.com> Domain Name.
Since Complainant herein has not provided adequate proof of trademark rights, the Complaint fails to prove the first element that is required to obtain the transfer of the Domain Name <citifinance.com>
Response to the Allegation that Respondent has no Legitimate Interest in the Domain Name
Complainant has also failed to sustain its burden of proving that Respondent did not have any legitimate interest in the domain name. Respondent notes that a Complainantís burden of proof on this issue is made clear in the case of General Machine Products Co. v Prime Domains, NAF Case No. FA0092531 which states as follows:
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following,Ö[ including that the respondent has no legitimate interests in respect of the domain name.]
Similarly in the case of Dorset Police v Gerry Coulter, eRes Case No. AF00942 (October 20, 2001), the decision states as follows:
Complainant has the burden to prove that Respondent has no rights or legitimate interests in the Domain Names, and that they have been registered and are being used in bad faith.
Similarly, in the instant case, the Complainant has also failed to satisfy the "test of Paragraph 4a(ii)" since Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the domain name.
Complainant alleges that Respondent has had no legitimate interest in the domain names because Complainant has found no evidence that Respondent has ever been commonly known by "citifinance" or "cititravel", or that Respondent operates a legitimate business under such domain name. Indeed, Respondent's "www.citifinance.com" website is currently inactive, and his "www.cititravel.com" website features third-party advertisements, not content, and advertises a link for domain names for sale. Complainantís failure to find evidence does not constitute proof of this important element. Furthermore, current inactivity is not proof that Respondent did not have any legitimate interest in the domain name.
Complainant alleges that the domain name <travel.com> features third-party advertising content, but not content. This is an inaccurate statement.
Complainant makes certain allegations stating that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's CITI Marks as to the source, sponsorship, affiliation or endorsement of the website. A conclusory allegation about Respondentís intent (without any substantiation) does not constitute proof that Respondent did not have any legitimate interest in the domain name. Complainant alleges that "Because of the extensive similarity between the Domain Names and the Complainant's CITI Marks, individuals confronting Respondent's Domain Names are likely to be confused, and to believe that Respondent, his activities, and/or websites are connected or affiliated with, sponsored or endorsed by, or emanate from Complainant. Complainant has not proven trademark rights as discussed above. "Likely confusion" is not a proof that Respondent did not have any legitimate interest in the domain name.
Complainant alleges that Complainant has not given Respondent any license, permission or authorization by which Respondent could own or use domain name registrations incorporating the famous CITI mark. This does not prove that Respondent did not have any legitimate interest in the domain name. As described above, Complainant entity does not own any relevant trademarks. Many other entities have trademark rights in the term CITI or in terms that contain the four letters CITI
Complainant alleges that with respect to the requirements of .biz registration that "Notwithstanding such heightened standard, as noted above, Respondent's use of this Domain Name serves no purpose other than to redirect an Internet user to the "www.cititravel.com" website." This does not prove that Respondent did not have any legitimate interest in the domain name. As described above, Complainant entity does not own any relevant trademarks. Respondent also notes that many other entities have trademark rights in the term CITI or in terms that contain the four letters CITI
Conspicuously absent from the Complaint is any evidence, proof or rationale to support Complainantís required proof that Respondent has no rights or legitimate interests in respect to the domain name. The Complainant therefore fails to fulfill its burden of proving that Respondent has no rights or legitimate interests in respect to the domain name. Complainant has, therefore, failed to provide the proof that is necessary to justify the taking away of Respondentís valuable domain name that Respondent has registered for use in its business.
Although the Complainant has the burden of proving that Respondent has no rights or legitimate interests in respect of the domain name, and the Respondent does not have the burden of proving that it does have legitimate rights in the domain name, the Respondent provided evidence to prove that it does have legitimate rights in the domain name.
Respondent does, in fact, have rights in the domain name for purposes of Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy since Respondent (1) has satisfied the conditions of section (i) by engaging in the use of and preparation for the use of the domain name in connection with a bona fide offering of goods and services and (2) "has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; before any notice of the dispute"; The Respondent presented evidence to prove that Respondent has been engaged in business activities under the business name of <cititravel.com>.
1. Certification from Mr. Michael Thomas, the President and CEO of OneTravel.com, Inc, one of the leading travel companies on the Internet. In his statement he confirms that "no advertising revenue is received by <cititravel.com> for any of the links on the <cititravel.com>, they just take the visitor to the cititravel site that Respondent administers under the clearly branded cititravel nameÖOver 90 % of the traffic received by the cititravel site is the result of the active and paid promotion of <cititravel.com> brand name. As an example, tens of thousands of "keywords" are promoted via paid search engines. Mr. Parvinís <cititravel.com> domain name pays for all the advertising.
2. An attachment to the Response contained an email and attachment listing many of the bookings for <cititravel.com> demonstrating that the Respondent makes sales as a result of his use of the domain names and as a result of his advertising of his brand.
3. Another exhibit to the Response displays an example of the advertising of cititravel that was conducted by Mr. Parvin.
This demonstrates that Respondent was utilizing the domain names in connection with a bona fide offering of goods or services. The business activity advertised its brand name <cititravel.com>, incurred expenses and received income from the business activity.
Complainant has the burden of proving that Respondent has no rights or legitimate interests in respect of the domain name. Complainant has failed in sustaining its burden of proof. Furthermore, although the Respondent does not have the burden of proving that it does have legitimate rights in the domain name, Respondent provided evidence, legal rationale, and case law support to prove that Respondent does have legitimate rights in the domain name.
Response to the Allegation that Respondent has registered and is using the Domain Name in Bad Faith
In the instant case the Respondent did not register the domain name in bad faith but did, in fact, have a legitimate interest.
UDRP decisions have consistently held that Complainants have the burden of proving that a Respondent has registered and has used the domain name in bad faith. For example, this principle is espoused in the case of Diamond Shamrock Refining and Marketing Company v. CES Marketing Group Inc, NAF Case No. FA0096766. The decision states as follows:
The bad faith element is actually two elements, requiring the Complainant to show both bad faith registration and bad faith use. World Wrestling Federation Entertainment, Inc. v. Brosman, WIPO Case No. D99-0001 (January 14, 2000) ("the name must not only be registered in bad faith, but it must also be used in bad faith").
Respondent emphasizes that the Uniform Domain Name Dispute Policy requires that Complainant must prove bad faith both at the time of registration and in the current use of the domain name. A close examination of Complainantís filing does not provide adequate proof or evidence to support the allegation that Respondent acted in bad faith. Respondent addresses each of Complainantís three allegations with respect to the issue of bad faith Ė both at the time of registration and in the current use of the domain name:
Complainant alleges that Respondent registered the domain name in bad faith because Respondent was aware of the Complainantís ownership of CITI. Complainantís ownership of the trademark rights is far from conclusive. Other entities also had trademarks for other services and products.
Complainant alleges that Respondent registered the domain name in bad faith because Respondent attempted to sell the <citifinance.com> domain name. Respondent is entitled to sell a domain name. Complainant did not have trademark rights in the relevant words. Furthermore Respondent did not desire to sell his domain names.
Complainant alleges that Respondent was or should have been aware of the existence of such marks at all relevant times. In Paragraph 26 Complainant alleges that Complainant operates 30 CitiFinancial branches throughout New Jersey, and 40 Citibank branches within a 45 mile radius of Respondent. This does not prove bad faith. Any possible trademark rights are far from obvious.
Complainant alleges that bad faith is proven by the fact that other domain names have been registered by Respondent which are allegedly infringing. This does not prove bad faith. The cited case support was in a dispute that was not responded to by Respondent.
Complainant alleges that Respondent was or should have been aware of the existence of such marks at all relevant times. This does not prove bad faith. Any possible trademark rights are far from obvious.
Complainant alleges that Respondent "A finding of bad faith with regard to the registration and use of the <citifinance.com> Domain Name, specifically, is supported by Respondent's attempt to sell such domain name on the "www.citifinance.com" website."
Complainant alleges that "A finding of bad faith with regard to the <citifinance.com> Domain Name, specifically, is further supported by the fact that Respondent is currently making no use of the website. This does not prove bad faith. The cited case support was in a dispute that was not responded to by respondent.
Complainant alleges that Respondent's <cititravel.biz> Domain Name was registered and is being used in bad faith because it is not being used primarily for bona fide business or commercial purpose, as Respondent certified when registering the <cititravel.biz> Domain Name. Evidence is provided in the Exhibits to show that a business purpose was being conducted.
Accordingly, Complainant has failed to prove that Respondent has registered and has used the domain name in bad faith
UDRP decisions have held that when no proof of bad faith is presented by the Complainant, the Complainant fails to establish the element of bad faith. For example, in the case of WPP GROUP PLC v. WPP, eRes Case No. AF-0530a the decision states that [emphasis added]:
There has been absolutely no evidence presented by Complainant before the Panel to show one of the circumstances set out above or any other circumstance of bad faith. The Complainant has therefore failed to establish this element.
Similarly, in the instant case there has not been any conclusive evidence presented by Complainant to show one of the listed circumstances or any other circumstance of bad faith. Therefore, the Complainant has failed to establish this required element. Complainant has failed to prove that there was bad faith both at the time of registration and in the current use of the domain names.
Since Complainant has failed to prove the element of bad faith, Complainantís request for the transfer of the domain name should, therefore, be denied.
6. Discussion and Findings
We divide our discussion into two parts: Part 1 pertains to <citifinance.com>, which presents a strong case for transfer. Part 2 addresses <cititravel.com> and the other CitiTravel Domain Names, which present more difficult questions.
The Panel concludes that the <citifinance.com> aspect of the case has been proven by Complainant. The Citi holding company has shown that it or its subsidiaries own a number of specific TMs, including one directly on point, that Respondent has no established interest in the marks or the domains, and the proposed sale of at least the one domain as advertised establishes bad faith.
Identical or confusingly similar to Complainant's trademark.
Respondent is correct that the Complainant is not the owner of the marks in question, which it is required to be under the UDRP. The Panel concludes, however, that it can overlook this deficiency based on accepting the allegation that the Complainant is the beneficial owner of the trademarks through its ownership of the formal trademark owners. Complainant should have joined its subsidiaries as co-Complainants in order to avoid this problem. The Complainant is well known and the prefix "citi" in connection with financial and banking services will undoubtedly be associated with Complainant or one or more of the subsidiaries.
Complainant owns the trademark CITI for financial services, and the Domain Name <citifinance.com> includes in its entirety the trademark. It widely accepted that a trademark which is comprised in another very often will be a contributing factor in establishing confusingly similarity.
No rights or legitimate interests in respect of the Domain Names.
No evidence has been offered that Respondent has ever been commonly known by citifinance, or that Respondent operates a legitimate business under that Domain Name. The website is apparently inactive for the moment. The Respondent has, however, tried to sell the Domain Name at issue.
The Respondent does not counter Complainantís allegation, but merely declares that "Complainant's failure to find evidence does not constitute proof of this important element". As to the second element, legitimate interests possessed by Respondent, Respondent should have the burden of production Ė at least the burden of identifying legitimate interests. No Complainant can prove a negative. Respondent has not met this burden.
Moreover, it is obvious that where the Respondent has tried to sell the Domain Name, such conduct is inconsistent with existence of a legitimate interest in the Domain Name, absent assertion of some such interest and some explanation of the motivation for sale. There is none here.
Registered and used in bad faith.
Respondent also does not really counter Complainantís allegation that the Respondent obviously knew of the CITI marks and of the commercial and financial activity of the Complainant, that the Respondent has tried to sell the Domain Name, that the website is inactive and that the "Respondent has engaged in a pattern of conduct which indicates that he registered the Domain Names primarily for the purpose of selling, renting, or otherwise extracting value from the Domain Names based on the goodwill and renown that Complainant has assiduously developed in its CITI Marks".
As mentioned above, in item 2, it is not obvious why the Respondent should want to own the Domain Name <citifinance.com> unless it was for the purpose of selling it, as the evidence clearly proves. To register and use a well known trademark as a kind of merchandise within a field, which is core activity of the owner of the mark, is an act of bad faith under the UDRP.
We conclude that <citifinance.com> shall be transferred.
<cititravel.com>, <cititravel.org>, <cititravel.net>, <cititravel.info>, <cititravel.biz>
Identical or confusingly similar to Complainant's trademark.
The Complainant has not established to the satisfaction of the Panel that it owns either a registered or a common law trademark on cititravel, although it casually states, with no actual evidence (as required by the UDRP), that it has used the mark "since as early as1986." Mere use of a mark is not evidence of ownership of it, nor association of it with the user by the public which takes time and advertising. It is not sufficient to simply allege mere use without at least some evidence of the nature and extent of the use of a common law trademark. There are a number of ICANN cases so holding. For example, The Complainant can satisfy the requirements of paragraph 4(a)(i) of the Policy by demonstrating that it has made sufficient actual use of such a mark and that the mark has become distinctive of the Complainant or its products. Business Architecture Group Inc d/b/a/ BAG v. Reflect Publishing, NAF Case No. FA0097051 (June 5, 2001). A mere assertion of use, without some evidence demonstrating that use and a right to use it, is insufficient. See, Sustainable Forestry Management Limited v. SFM.com and James M. van Johns "Infa dot Net" WebServices, WIPO Case No. D2002-0535 (September 13, 2002).
The Complainant is well known and the prefix "citi" in connection with financial and banking services will undoubtedly be associated with Complainant or one or more of the subsidiaries. The question is whether the public will have the same association with Complainant in connection with travel and travel services.
The Complainant argues that its ownership to a trademark for travelerís checks, CITICORP TRAVELERS CHECKS, and a mark, CITIPRIVILEGES, for services in class 39 supports this proposition. Further Travelers Life &Annuity is a member of Citigroup, Inc. From evidence in the case it is also clear that the Complainant owns a large number of trademarks where CITI is the prefix.
The Respondent contests the allegation primarily by noting, inter alia, that "Complainant has therefore failed to demonstrate that the public sees the phrase primarily as means of identifying the [this?] product. Moreover, to whatever extent the word CITI is distinctive or has otherwise achieved secondary meaning, it is not exclusively, or even primarily, through the efforts of the Complainant".
One-hundred-twenty USPTO records pertain to marks containing the string "CITI," some arguably pertaining to travel, and most not associated with the Complainant. It is, therefore, in the view of the Panel questionable whether a member of the traveling public will believe that <cititravel.com> and the other CitiTravel Domain Names are associated with CITIGROUP, Inc. merely because there are a group of CITI marks in other fields of use.
Complainantís subsidiary does own the Citiprivileges mark, which Complainant relies upon as evidence it was in the travel business, and that therefore it expanded the scope of its Citi mark to the field of use of travel. This might work but for the fact that (1) its own registration discloses first use in August 1999 Ė while it admits that Respondent registered his <cititravel.com> domain, more than a year before such first use, in April 1998; and (2) the real use of the citiprivileges mark was not really in the travel business, but as a reward for using the credit cards of Citi which provided travel credits, etc. for such use. Thus, the rights of Respondent predate Citi, even if they (Citi) were actually in the field of "travel" business in 1999, which is doubtful.
Even if CITI is widely used by the Complainant in connection with all kinds of financial services, the Panel does not think it has proven such a reputation as to stop others from using CITI in connection with other activities, i.e. travel.
Regardless of any other argument, the mere fact that the Respondent registered the Domain Name <cititravel.com> before any use was made or claimed by Complainant would seem to preclude any claim to it under the UDRP as a matter of law, absent evidence that Respondent somehow fraudulently learned of a planned use and "jumped the claim." One cannot register a domain in bad faith if there is no trademark claimant at the time of registration.
The Panel notes that Citigroup has recently prevailed in another domain name decision, involving the domain <citiwarrants.com>. However, as this Panel understands that case, there a Vice President of Citibank AG registered the domain name for the organisation in 2000, but with himself as owner. After Citibank AG discovered that he was the legal owner of the domain name, it claimed it. In the meantime, in 2001, Citibank had filed trademark applications for CITIWARRANTS, and the home page had been in use for some time by them. This decision, as translated for us by our European co-panelist, appears to be correct, but does not help Complainant on the CITITRAVEL domains, because it is simply not apposite to the facts here. See, Citigroup Inc. v. Helge Haferkorn, WIPO Case No. D2003-0057 (March 13, 2003) (rendered in the German language).
What Citi is really arguing here is trademark dilution based on its family of marks, which are admittedly very large and fairly strong. The recent US Supreme Court case, Moseley v. V Secret Catalogue, Inc., 123 S.Ct. 1115 (2003), however, requires a trademark owner to show at least some potential damage from the use of a similar mark in order to prevail in a dilution claim. Citi has not alleged nor shown any damage or any likely damage on this element of the case, only alleging that it might be damaged since viewers might be confused into thinking they sponsored this website. We cannot base a decision on supposition, and it is up to the Complainant to provide evidence in support of its case.
Moreover, this is not the place to litigate dilution claims Ė the UDRP is for the purpose of stopping obvious abusive registration of domain names in a simple proceeding where there is little need for detailed and conflicting evidence. Here, on this point, Complainant has produced no evidence of confusion, no evidence of bad faith and no evidence of damage Ė just a dilution argument it might well prevail in a trial court Ė if it met the standards of the Moseley case.
There is also a possible laches argument because Citi sat on this claim for nearly 5 years in the case of some of these <cititravel> domains, before doing anything to protect its marks. In the case of the <cititravel.com> domain, it did so years after it was being used by Respondent and it does so now as a junior user.
The Panel must, therefore, conclude that Citi cannot establish any UDRP rights in the cititravel group of domains.
No rights or legitimate interests in respect of the Domain
Respondent has produced some admittedly weak evidence of actual use, of revenues derived from use of the <cititravel.com> domain, and third party confirmation of this, which we believe overcomes Complainantís argument of no right to use and no actual use. Further, Complainantís reliance on the case Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003, is simply wrong. That case is often cited for things it simply does not say Ė especially the idea that merely because others have an existing group of marks means that you are automatically a bad faith registrant or user. Complainant has simply not proven either lack of interest or bad faith, and certainly not lack of use in good faith, in the case of the <cititravel.com>. As we understand it, the other cititravel domains merely refer back to <cititravel.com>.
As of March 23, 2002, the website "www.cititravel.com" presented travel services. It is not clear when it began to do so, in light of the Complainantís allegations that the site originally contained only miscellaneous advertising. It is not illegal to use a domain to run a reference site to other travel businesses, although this type of right is often misused by cybersquatters as an excuse to hold a site intended for sale.
The use of <cititravel.com> is a website with an apparently genuine activity. However, one of the main purposes is to sell domain names connected to travel activities. One can wonder why register so many domain names, or have them for sale for others, if the main activity of one self is travel services. Nonetheless, we cannot say that this site is not a business activity or that it is, in principle, against the rules to sell domain names, as long as they are not the trademarks of others. "Trading in generic domain names is not of itself unlawful." Barilla Alimentare S.p.A. v. DNS Research, Inc., WIPO Case No. DBIZ2002-00091 (July 12, 2002).
Registered and used in bad faith.
Because of our conclusion above, the Panel concludes that the CitiTravel Domain Names are not registered and used in bad faith, at least as a group under the UDRP.
We do not accept Complainantís argument that registering a group of TLDs for the same word is bad faith in and of itself, since Citi has done the exact thing with many of its domains. If one has a right to use the word, one should be able to register .biz, .info, .us, etc. Complainant has not shown that Respondent has no right to register the cititravel name, as such.
Mr. Parvinís often questionable business activities are not the sort of thing we wish to encourage, but we must follow the UDRP rules. Although, by all indications, Mr. Parvin has shown a pattern of registering domain names in bad faith, we do not think that the Complainant has proved enough bad faith here to justify a transfer of the domain citittravel names, in light of its weak case on the first and second elements.
The Panel concludes, therefore, that the requested transfer of the CitiTravel Domain Names should be rejected under the UDRP.
The RDRP Rules and .Biz Domains
The Panel, however, feels that in light of the special strictures and rules of the RDRP which relate to the requirements relating to the registration and use of the .biz domain names, we agree with Complainant that the <cititravel.biz> domain was improperly registered and is being improperly used, not for a business, but merely as a referral to other businesses which is not the purpose of the .biz domains. The <cititravel.biz> domain does not sell anything, nor is it a business. Its apparent sole purpose, as of the date of this decision, is to cross link the user to <cititravel.com>.
As Complainant pointed out above, the range of conduct that can constitute bad faith registration and use is broader for .BIZ TLDs. See Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571 (August 6, 2002) (finding Respondent registered and used <nasdaqtrader.biz> domain name in bad faith due to violation of the RDRP). "[V]iolating 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." Id. In the present case, Respondent's <cititravel.biz> Domain Name was registered and is being used in bad faith because it is not being used primarily for bona fide business or commercial purpose, as Respondent certified when registering the <cititravel.biz> Domain Name.
The Panel, therefore, exercises its inherent power to order the <cititravel.biz> domain to be cancelled forthwith, because we believe the .biz domains have separate and more stringent tests for bad faith registration and use.
Comment on Dissent By Majority Panelists
The majority of the Panel wishes to make clear that it does not disagree with its dissenting brother panelist as to the possibility that Complainant might prevail on its claim of infringement because of potential confusion arising from Respondentís use of the CITItravel domain, versus its general CITI trademark, if this case were in a federal or state trial court with jurisdiction to deal with trademark claims. However, we are not a trial court of general jurisdiction, but an ICANN panel appointed through WIPO, and bound by the express rules and purposes of the ICANN UDRP. The majority believes that Complainant has not made its case on this aspect of its UDRP claims for the reasons expressed above.
The UDRP rules were established solely to deal with cases where a complaining party proves it owns a registered or common law trademark, which is substantially identical to a domain name that some third party has abusively registered and used in bad faith and without any legitimate right to do so. That is simply not the case here.
First, Complainant does not own a registered CITItravel mark and it provided absolutely no proof that it has a unique common law mark on this mark, beyond its bald claim that it does. It also provided no evidence that the CITItravel domain would be confusing, other than to argue that its CITI mark is famous. The latter is essentially an infringement or a dilution claim, neither of which is adjudicable here. A trial court would require significant proof on both of these issues, which Respondent might well dispute with his own evidence. As numerous ICANN Panels have stated, since we are not a trial court, an ICANN panel is not equipped to adjudicate infringement claims which require witnesses and other forms of contestable evidence.
This UDRP limitation was clearly expressed in AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058, where the Panel stated: "While the Complainant has repeatedly asserted issues of trademark infringement, those assertions are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else. ICANN proceedings, which by their very nature are highly abbreviated with very limited fact finding, are not designed to nor should they be used as a substitute for trademark infringement actions. ICANN panels, such as this one, simply have no authority to consider issues of trademark infringement. Such issues must be left for judicial review." [Emphasis added]
Furthermore, if we were to, as the dissent suggests, ask the Complainant to take a second pass at its failure to provide sufficient evidence on this issue, we would also have to permit the Respondent to provide his evidence to the contrary and his arguments, and we would thereby extend the already long period it has taken to complete this proceeding. The UDRP requires that the Complainant state its case and evidence in the Complaint. It does not contemplate, lengthy supplemental evidentiary pleadings. It has no provision for taking evidence from witnesses. That whole concept is the very antithesis of the UDRP Rules, which contemplate quick and simple proceedings. Furthermore, the majority feels for the Panel itself to initiate requests for additional evidence on a key issue would be bad policy and contrary to the UDRP.
Second, the majority is satisfied that Respondent showed at least a weak case of legitimate use and a reason for registering and using the domain name. Contrary to the dissenterís apparent view, it is not illegal to offer to sell domain names which are not the trademarks of others, while also using them for a business purpose. Third, there is no evidence of bad faith use as to this case. Because the Respondent has been a party to other UDRP cases is not conclusive evidence of bad faith in all other proceedings, without some evidence that relates to this case. As another WIPO panel said on similar facts, "The Panel declines to consider the NAF case involving Mr. Weitzman. Each case under the Policy must be considered on the facts presented to the particular Panel which may not be the facts presented to another Panel," Gloria-Werke H. Schulte-Frankenfeld GmbH & Co v. Internet Development Corporation and Gloria MacKenzie, WIPO Case No. D2002-0056.
Accordingly, we respectfully acknowledge the dissent of our fellow panelist, but believe it is not appropriate to recommend that the Complainant re-file on this disputed Domain Name, other than in a trial court in an infringement or dilution action.
Additional Panel Observations
The Panel wishes to offer two observations about the materials submitted by both counsel. First, the Response was sloppily edited, with many paragraphs and phrases repeated verbatim. Second, the Panel believes that parties, in the future, should refrain sending to the Panel literally hundreds of pages of cases in support of their positions. Panel members can obtain copies of other Panel decisions through the Internet if necessary to read the cases. The practice of sending virtually all cases cited merely wastes resources and slows the process of distributing the materials to the Panel.
It is, on the other hand, important for counsel to see that specific web page content is made available to the Panels, especially when the content has changed from an earlier date. Also copies of declarations and other documentary evidence are encouraged, where it contributes to necessary proof. Counsel need to remember that unlike a trial court that can simply listen and observe the witnesses, we, on domain name Panels, have only the written evidence and specific Internet references provided in the briefs and pleadings on which to base the decision. If the written evidence, in the form of an advertisement or a declaration is not there, we must assume it does not exist. On the other hand, legal counsel should assume in this day and age that the Panel members can use the Internet to obtain legal research sources, and in most cases would prefer to do so.
With reference to Paragraphs 4(i) of the RDRP, 4(i) of the UDRP and 15 of the UDRP Rules, the Panel orders that:
<citifinance.com> shall be transferred to Complainant, <cititravel.biz> shall be cancelled, <cititravel.com>, <cititravel.org>, <cititravel.net> and <cititravel.info> should not be transferred or cancelled.
G. Gervaise Davis III
Statement of Presiding Panelist Henry H. Perritt, Jr., Concurring in Part and Dissenting in Part.
I concur with that part of the majority opinion which orders transfer of the <citifinance.com> and cancellation of <cititravel.biz> Domain Names. I respectfully dissent from that part of the decision that declines to order transfer of <cititravel.com>, <cititravel.org>, <cititravel.net> and <cititravel.info>.
CITItravel is confusingly similar, or identical, to a famous mark held by CITI.
The first element of the UDRP requires us to order transfer if we find that CITItravel "is identical or confusingly similar to a trademark or service mark in which the complainant has rights." No one in this proceeding disagrees with the proposition that the Complainant has a registered, famous, trademark in CITI. CITItravel meets the "confusingly similar" test with respect to CITI.
The majorityís finding that the Complainant does not have trademark rights in CITItravel is wrong as a matter of trademark law. The "expansion of trade" or "natural expansion" doctrine gives Complainant rights in the CITItravel mark. "[S]enior user's rights may extend into uses in 'related' product or service markets (termed the 'related goods doctrine'), and . . . an owner of a common law trademark may use its mark on related products or services and may enjoin a junior user's use of the mark on such related uses . . . . [A] trademark owner has protection against use of its mark on any product or service which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with, connected with, or sponsored by, the trademark owner." Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1201 (11th Cir. 2001) [internal quotations and citations omitted] (affirming finding of infringement of mark initially developed for e-mail notification software, then extended for service that allows users to check e-mail via telephone line).
The Complainant owns the registered mark CITI, which surely qualifies as famous. The Complainant is entitled to protect this mark, not only in markets where it has been used, but also in other markets where the mark owner is likely to expand trade. Given the Complainantís long involvement with travelers checks, and its involvement in travel related services under the CITIprivileges mark, other travel services identified by the CITI mark fall within the scope of expansion-of-trade. "Defendant's contention that he has a prior or superior right in the JAGUAR Trademark for cologne is without merit. It is well settled that a trademark owner may protect his mark against the use by a latecomer of a confusingly similar mark on a product not yet sold by Plaintiff, but which consumers may believe is sold or otherwise sponsored by Plaintiff because it is within Plaintiff's natural business expansion." Jaguar Cars Ltd. v. Skandrani, 771 F.Supp. 1178, 1184 (S.D.Fla.,1991) [internal quotations omitted]. This principle is implicated in this case because a consumer encountering the Respondentís website is likely to think, "Oh, CITI Group has introduced travel services!"
It is well known that a character string comprising a trademark (such as "CITI") with other generic words (such as "travel") appended to it are infringing because they are likely to confuse consumers into thinking that the product or service offered in connection with the character string is offered by the owner of the trademark.
CITI also unambiguously claims a trademark in CITItravel. The Complainant alleges, "Complainant has used CITITRAVEL for travel-related services as a common law mark since as early as 1986." The disputed domain name is identical to that trademark. The majority declines to accept this allegation because the Complainant failed to present evidence. The Respondent did not deny the allegation. He asserted that the Complainant must submit evidence. Paragraph 12 of the Rules clearly permits us to request a supplemental filing. Before the majority found against the Complainant on the ground of insufficient evidence, we should have requested a supplementary filing from the Complainant.
The majorityís finding that the CITItravel.com mark should not be transferred is inconsistent with other WIPO decisions, including:
Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 (finding transfer of <nikesportstravel.com> and <niketravel.com> appropriate)
Juventus F.C. v. Hyung Jin Park, WIPO Case No. D2001-0896 (finding <juvecard.com>, <juvebiz.com>, <juvetravel.com>, <juvepark.com>, <juvemobile.com> registered by Respondent to be confusingly similar to trademark "JUVE, owned by soccer team)
Playboy Enterprises International, Inc. v. Domain Active Pty Limited, WIPO Case No. D2002-1156, (ordering transfer of 74 domain names including the trademark "playboy," such as <tv-playboy.com>, <virtual-playboy.com>, <playboycelebrities.com>)
The Complainant also established the second element of the UDRPóRespondent lacks rights or legitimate interests in domain name. The only interest asserted by the Respondent is the use of CITItravel to link to a third-party travel site. The facts, as alleged in paragraphs 8, 9, and 10 of the Complaint demonstrate that the Respondent initially offered the CITItravel Domain Name for sale, and asserted no more interest in that name than he could in the hundreds of other well known marks he registered. That he subsequently concocted a link to a travel site, after the domain name dispute arose, does not vitiate his lack of legitimate interest at the time he registered the Domain Name or when the proceeding was commenced. A respondent should not be able to bootstrap legitimacy by using anotherís famous mark for otherwise legitimate activities. It surely would not be permissible for one to use <cocacola.com> merely because he uses the name to offer a type of drink. Likelihood of confusion with a famous mark strengthens the inference that no pre-existing legitimate interests justify use of the confusing Domain Name.
The Complainant also established the third elementóbad faith. For example, the <cititravel.com> web page as archived by "www.archive.org" in May, 2002, purported to offer travel services, but also contained a link to "travel domains for sale," and a prominent link to FirstDomains.com, offering domain names for sale. Respondentís egregious and extensive practice of registering domain names similar to famous trademarks, including other variations on CITI, supports the inference that he is acting in bad faith with respect to CITItravel. It might be questionable whether the panel should consider isolated past instances of cybersquatting on other domain names as evidence of bad faith in a particular case, but this Respondentís history rises to the level of a habitual pattern of conduct, which can support an inference of bad faith.
As I said earlier, the panel should have allowed a supplemental filing on the question of common-law trademark in CITITRAVEL.
That this decision has come out the wrong way, however, does not deprive the Complainant of appropriate relief. It can, of course, bring an action under the Anti-Cybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. ß 1125(d)(1). It also can bring another UDRP case. In Den Norske Lægeforeningen v. Eivind Nag, WIPO Case No. D2000-1267 (November 15, 2000), the Complainant failed to prove a trademark and the Sole Panelist, Jonas Gulliksson, after denying transfer, concluded as follows:
"It is important to note that the ICANN Rules contemplate only limited evidentiary presentations by the parties. Although the Panel has found on the basis of the filed evidence that the Complainant has not established a right of user [sic] to the word "Legeforeningen", this is not a definite determination. In the event that the Complainant could prove a right of user [sic] in the future, then Complainant may refile this proceeding and seek transfer of the domain name or initiate court action, and this decision is without prejudice to any such further proceedings."
I encourage the Complainant to refile with respect to the CITItravel Domain Names.
Henry H. Perritt, Jr.
Dated: May 12, 2003