WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citigroup Inc., Citicorp v. Phayze Inc.
Case No. D2003-0430
1. The Parties
The Complainants are Citigroup Inc. and Citicorp, New York United States of America represented by Skadden, Arps, Slate, Meagher & Flom, LLP of United States of America.
The Respondent is Phayze Inc., Paris, France.
2. The Domain Name and Registrar
The disputed domain name <citiback.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 4, 2003. On June 5, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On June 5, 2003, CSL Computer Service Langenbach GmbH dba Joker.com 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 Complainants filed an amendment to the Complaint on June 12, 2003 via email, and on June 17, 2003, in hardcopy. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 10, 2003.
The Center appointed Mr. Peter G. Nitter as the sole panelist in this matter on July 24, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, Citigroup, 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-related service marks and trademarks (the "CITI Marks"), among the most well-known of which are the names and marks CITI (the "CITI Mark") and CITIBANK (the "CITIBANK Mark"). The CITI Mark, 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 CITIBANK Mark, U.S. Reg. No. 691,815, was first registered on January 19, 1960, for banking services.
Complainantsí trademarks prefixed with CITI, including the above-mentioned marks, have unquestionably been famous in more than two decades. From 1998 through 2002, the Complainants have spent nearly $7 billion advertising its family of CITI Marks throughout the world. In 2002 alone, the Complainants generated over $71.3 billion in net revenues using its CITI family of marks, including the CITIBANK Marks, in connection with its financial and related services.
The Complainants have an active presence worldwide, and provides a wide variety of services worldwide, with over 1,400 branches and 3,800 ATMs in approximately 100 countries. Complainants also operate two branches in or around Paris, France, where Respondent purportedly resides. Complainants offer French individual customers and corporate customers banking, investment, insurance, credit card, and other financial services.
Complainants own approximately 800 domain name registrations featuring the famous family of CITI Marks, including the CITIBANK Mark.
5. Partiesí Contentions
The Domain Name is confusingly similar to Complainantsí marks.
Respondentís Domain Name fully incorporates Complainantsí famous CITI Mark, is confusingly similar to Complainantsí CITI and CITIBANK Marks, and mimics Complainantsí CITIBANK Domain Names. Indeed, the Domain Name is an obvious and minor alteration of Complainantsí famous CITIBANK mark and domain names in that it replaces one letter for another Ė namely the letter "c" for the letter "n." Furthermore, there is evidence of actual confusion caused by Respondentís Domain Name.
Panels routinely find confusing similarity where a domain name is merely the combination of a famous and distinctive mark, such as the CITI mark, with a generic word, such as "back".
Respondent has engaged in "typosquatting" by registering a minor and phonetically similar misspelling of Complainantsí CITIBANK Mark and <citibank.com> domain name, a practice which inevitably results (as it is intended to) in confusing similarity.
Respondent has no rights or legitimate interest in the Domain Name.
Complainants have found no evidence that Respondent has ever been commonly known by "Citiback," nor that Respondent operates a bona fide business under the Domain Name. Indeed, as noted, Respondentís web site simply links to a pornographic web site that is not known as or related to the name "Citiback".
Upon information and belief, Respondent has never used any trademark or service mark similar to the Domain Name by which it may have come to be known, has not made use of the Domain Name in connection with any legitimate business, and is not making a protected non-commercial use of the Domain Name.
Respondentís Domain Name is nearly identical and is confusingly similar to the Complainantsí CITI and/or CITIBANK Marks. In addition, Respondent was undoubtedly aware of the CITI and CITIBANK Marks prior to registration of the Domain Name, as they are famous. Because Respondent had constructive notice of the CITI and CITIBANK Marks when he registered a domain name that was nearly identical and confusingly similar to those marks, Respondent has no rights or legitimate interest in the Domain Name.
Because the Domain Name and the Complainantsí CITI and CITIBANK Marks are nearly identical and are confusingly similar, individuals confronting Respondentís Domain Name are likely to be confused, and to believe that Respondent, its activities, and its web site are connected or affiliated with, sponsored or endorsed by, or emanate from Complainants.
The fact that Respondent has been involved in, and lost, prior domain name disputes, further indicates that Respondent has no legitimate rights in the Domain Name.
Respondent registered and is using the Domain Name in bad faith.
The registration and use in bad faith is evidenced by (i) Respondentís notice of Complainantsí ownership and the fame of its CITI and CITIBANK Marks and therefore, by registering the confusingly similar Domain Name, intention to capitalize upon any confusion with Complainantsí marks; (ii) Respondentís "www.citiback.com" web site connects to web pages that compete with Complainantsí business; (iii) Respondent has failed to reply to Complainantsí attempted communications; (iv) Respondent has provided false contact information; (v) Respondentís use violates specific representations made by Respondent in the Registrarís Registration Agreement; and (vi) Respondent has evidenced a pattern of bad faith registration and use.
The Respondent did not reply to the Complainantsí contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel agrees with Complainantsí assertions that Respondent has registered a domain name that mimics Complainantsí domain name, and that it is an obvious and minor alteration of Complainantsí famous CITIBANK mark and domain names, which leads the domain name at issue to be confusingly similar with Complainantsí trade marks.
B. Rights or Legitimate Interests
Pursuant to the Policy, para 4(a)(ii) the second element of a claim of abusive domain name registration is that the Respondent has no rights or legitimate interests in respect of the domain name.
There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made noncommercial or fair use of the name. As Complainantsí trademarks are famous, Respondent has undoubtedly been familiar with these when registering its domain name that was nearly identical and confusingly similar to Complainantsí marks.
Respondent has furthermore been involved in, and lost, prior domain name disputes, which is a further indication of lack of rights or legitimate interests in the domain name at issue.
According to the above, the Panel finds that Complainants have established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
C. Registered and Used in Bad Faith
The Panel has considered Complainantsí assertions and evidence with regard to the Respondentís registration and use of the domain name in bad faith. By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name at issue in bad faith.
Complainants have put forward evidence that they has registered and used a wide range of CITI prefixed trademarks, hereunder the trademark CITIBANK, to such an extent that these are to be regarded as famous. Given the fame of the trade mark CITIBANK, the Panel finds it highly unlikely that this has not been known to Respondent when registering the domain name at issue. Hence, the Panel finds that Respondentís registration and use of the domain name at issue appears to be an intentional attempt to capitalize upon a likely confusion with Complainantsí trademark and/or domain name CITIBANK.
The Panel also finds that Respondent has failed to reply to Complainantsí attempted communications and that he has provided false contact information. Furthermore, the Panel takes into consideration that Respondentís use violates specific representations made by Respondent in the Registrarís Registration Agreement; and that Respondent previously has been involved in domain name disputes which have been decided against him.
The above circumstances constitutes evidence of registration and use of a domain name in bad faith pursuant to Paragraph 4(b) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <citiback.com> to be transferred to the Complainants.
Peter G. Nitter
Dated: August 7, 2003