WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citigroup, Inc v. Party Night Inc. aka Peter Carrington
Case No. D2003-0480
1. The Parties
The Complainant is Citigroup, Inc, a Delaware corporation with a principal place of business in New York, United States of America, represented by Haynes and Boone, LLP, United States of America.
The Respondent is Party Night Inc. aka Peter Carrington, with addresses in Amsterdam, The Netherlands and Geneva, Switzerland.
2. The Domain Names and Registrars
There are two domain names at issue.
The disputed domain name <citifiancial.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
The disputed domain name <arcadiafinacial.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 20, 2003. On June 23, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com and to CSL Computer Service Langenbach GmbH dba Joker.com requests for registrar verification in connection with the domain names at issue. On June 23, 2003, Key-Systems GmbH dba domaindiscount24.com and CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center their verification responses 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 July 3, 2003. 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 July 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 31, 2003.
The Center appointed George R. F. Souter as the Sole Panelist in this matter on August 8, 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 states that it was formed in 1998, by the merger of Travelers and Citicorp, and is the worldís largest financial services firm and the largest US-based bank holding company, with over $ (US) 1 trillion in assets, over 270,000 employees around the world, and managing customer accounts across six continents in more than 100 countries.
In connection with the Complaint for <citifiancial.com>, the Complainant has drawn the attention of the Panel to Citigroup Inc v. Ian Templeton, WIPO Case No. D2002-0231, in which, to the satisfaction of the Panel in that case, it demonstrated the ownership, by registration and reputation, of its "CITI-prefixed Family of Marks", and to a number of other decisions dealing with the same issue. In the present case, the Complainant has supplied the Panel with details of a number of trademark registrations and pending applications, including a European Community trademark registration, of its trademark CITIFINANCIAL.
The Complainant, through its wholly-owned subsidiary, Citibank NA, operates websites under the domain names <citifinancial.com>, <citifinancial.net>, <citifinancial.biz>.
In connection with the Complaint for <arcadiafinacial.com>, the Complainant has provided the Panel with a certified copy of US trademark registration No 1816141, of the trademark ARCADIA FINANCIAL LTD (and device), registered in 1994, claiming first use in commerce in 1992, owned by its wholly-owned subsidiary, Arcadia Financial Ltd. The Complainant avers that Arcadia Financial Ltd is "the largest indirect automobile lending institution in the United States, providing auto financing for over 100,000 franchised and independent auto dealers in 46 states and servicing active loans valuing approximately $5 billion with over 450,000 customers."
The Complainant, through its wholly-owned subsidiary, Citibank NA, operates a website under the domain name <arcadiafinancial.com>.
The Complainant alleges that the domain names at issue are used to operate websites with sexually explicit content, and has provided proof of such usage.
5. Partiesí Contentions
The Complainant contends that the domain names at issue are virtually identical and confusingly similar to the Complainantís well known marks, that the Respondent has no rights or legitimate interests in either domain name, and that the Respondent is "a notorious and serial typosquatter who has engaged in a pattern of bad faith registration by knowingly registering Ödomain names, confusingly similar or identical to distinctive or famous marks", and that, accordingly, the domain names at issue have been registered and used in bad faith.
The Complainant, inter alia, further alleges that the Respondent "is unlawfully using the Domain Names for commercial gain, namely to divert customers to his porn site to, inter alia, generate advertising revenue and to deceive Internet users into believing that Complainant is associated or affiliated with, or sponsors or endorses the parties whose goods and services are advertised in Respondentís offensive and sexually explicit pop-up windows". Such use has been deemed "a textbook case of bad faith registration and use under the Policy 4(b)(iv)" AOL Time Warner Inc v. John Zuccarini, WIPO Case No. D2002-0827."
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy lists three tests which a Complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
(i) Identical or Confusingly Similar
The panel is satisfied that the Complainant has protectable trademark rights through registration and reputation in connection with both trademarks CITIFINANCIAL and ARCADIA FINANCIAL.
The domain names at issue are both (suspiciously) "close" mis-spellings of these trademarks. It is well-established in the case law under the Policy that such "close" mis-spellings result in confusing similarity with a Complainantís trademarks. See, for example, Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc, WIPO Case No. D2002-0954, in which the Respondent in this case was also the Respondent. The Panel concurs with this consistent line of reasoning, and so decides in this case.
(ii) Rights or Legitimate Interests
The Respondent has not taken the opportunity accorded to him under these proceedings of justifying its adoption of the domain name. There appears to be no circumstances attached to the Respondentís name or address(es) which might lead to any suspicion of legitimate interest. In these circumstances, the Panel decides that the Complainant, whose Complaint was transmitted to the Respondent under the procedure, has satisfied the second test. The Panel is reinforced in this conclusion by the knowledge that the Respondent in this case has been a frequent Respondent in other similar "mis-spelling" (or "typosquatting") cases (see, for example, Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc, WIPO Case No. D2002-0954), and in each case there has been a finding that he had no rights or legitimate interests in the domain names at issue.
(iii) Registered and Used in Bad Faith
The third test is, in reality, a dual test, requiring the Panel to be satisfied both that the domain names have been registered in bad faith and used in bad faith.
The Panel has consistently taken the view in previous cases that a pattern of abusive behaviour is sufficient to satisfy both legs of this test. Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc, WIPO Case No. D2002-0954 is an illustration of the Respondentís pattern of behaviour in connection with the registration and use of domain names, and reinforces the Panelís finding in this case that there has been both registration and use in bad faith in connection with both the domain names at issue.
The Panel could, equally, on the specific facts of this case, have arrived at the same finding on this test by applying the reasoning (with which he is in entire agreement) of the Panel in AOL Time Warner Inc v. John Zuccarini, WIPO Case No. D2002-0827 referred to above (in which, according to evidence supplied by the Complainant in this case, the Respondent was, in all probability, an alter ego of the Respondent in this case).
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 names, <citifiancial.com> and <arcadiafinacial.com> be transferred to the Complainant.
George R. F. Souter
Dated: August 22, 2003