WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citigroup Inc. v. Withheld for Privacy Purposes of Privacy service provided by Withheld for Privacy ehf / Stanford Atoms
Case No. D2021-1906
1. The Parties
The Complainant is Citigroup Inc., United States of America (the “United States”), represented by Frankfurt Kurnit Klein & Selz, PC, United States.
The Respondent is Withheld for Privacy Purposes of Privacy service provided by Withheld for Privacy ehf, Iceland / Stanford Atoms, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <citiglobalwealth.org> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2021. On June 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 25, 2021.
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” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 12, 2021. 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 is a global banking and financial services corporation with headquarters in New York. Its mission is to serve as a trusted partner to its clients by responsibly providing financial services that enable growth and economic progress.
It has 700 branches trading as Citibank in the US and more than 1,800 overseas. It is one of the biggest banks in the world with total assets of USD 1,951 billion in 2019. Its net income in 2019 was USD 19.4 billion. It is ranked 31st on the Fortune 500 list of companies.
Exhibited at Annex 4 to the Complaint is a copy of a press release referring to the announcement on January 13, 2021 of the creation of Citi Global Wealth, a single wealth management organization available at <https://www.citigroup.com/citi/news/2021/210113b.htm>. It provides for its clients having “access to a comprehensive range of products and services spanning investments, banking, lending, custody, wealth planning, real estate, art, finance and lending, and more with personalized advice, competitive pricing and efficient execution”.
The Complainant owns a number of trade mark registrations and pending applications for marks incorporating the terms CITI together with GLOBAL, as well as several other marks incorporating CITI.
The Complainant first used the mark CITIBANK in connection with financial services as early as February 2, 1959. It first used CITI in connection with financial services as early as February 2, 1979. It first used the mark CITI GLOBAL COLLECT in connection with financial services as early as November 20, 2019.
It owns over 100 registrations and pending applications for CITI marks with the USPTO as well as numerous applications and registrations worldwide.
It has adopted several other CITI-formative marks in connection with financial services, including through common law use, and these are incorporated into the definition of the CITI marks.
The CITI marks have received a large number of unsolicited media mentions. Samples are attached at Annex 5 to the Complaint. Furthermore, the Complainant has consistently won numerous industry awards.
Examples of the Complainant’s United States registered CITI marks are set out in Paragraphs 29 and 30 of the Complaint with copies of the certificates of registration at Annex 6 to the Complaint. These include:
- CITIBANK No. 691,815 dated January 19, 1960, in Class 36
- CITI No. 1,181,467 dated December 8, 1981, in Class 36
- CITI GLOBAL COLLECT No. 6,222,908 dated December 15, 2020, in Classes 36 and 42
Examples of the Complainant’s United Kingdom registered CITI marks with print outs from the UK Intellectual Property Office are set out at Annex 7 to the Complaint.
- CITI No. UK0002350326A dated July 14, 2006, in Class 36
- CITI PRIVATE BANKING FOR GLOBAL CITIZENS No. UK00003279426 dated May 25, 2018, in Class 36
As evidenced at Annex 4 to the Complaint, the Complainant has also been making common law use of CITI GLOBAL WEALTH since at least as early as January 13, 2021. The Complainant submits that as a result of its substantial investment, continuous use, and promotion of the CITI marks, it has developed substantial rights and goodwill in the marks. The public has come to associate the CITI marks exclusively with Citigroup as the source of its well-regarded and trusted financial services including its online banking and investment management services.
The disputed domain name was registered on May 31, 2021, more than 40 years after the Complainant began using the CITI trade mark, more than five months after the announcement of the Complainant’s Citi Global Wealth organization, and well after the dates of registration of the Complainant’s registered trade marks referred to above.
In the absence of a Response from the Respondent the Panel finds the above evidence adduced by the Complainant to be true.
5. Parties’ Contentions
The Complainant submits;
i. The Complainant owns registered and unregistered rights in the marks CITI and CITIBANK together with GLOBAL and WEALTH which predate the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s marks.
ii. On the evidence the Respondent has no rights or legitimate interests in respect of the disputed domain name.
iii. On the evidence the disputed domain name was registered and used by the Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established, as set out above, that it has registered rights for the mark CITI in the United States and the United Kingdom. Moreover, it also has registered rights for marks incorporating both CITIBANK and GLOBAL.
Furthermore, the Complainant has also traded since January 2021 under the mark CITI GLOBAL WEALTH. In the Panel’s view that is sufficient, as submitted by the Complainant, for it to acquire common law rights in that mark. On that basis the Panel is satisfied that the disputed domain name is confusingly similar to that unregistered mark.
Alternatively, as is also submitted by the Complainant, the words “global” and “wealth”, when used in conjunction with the registered mark CITI, are indicative of international financial services and “do nothing” to distinguish the disputed domain name from the mark CITI.
In accordance with well-established practice, the Panel ignores the gTLD “.org” in reaching its finding.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered mark CITI and the unregistered mark CITI GLOBAL WEALTH in which it has acquired common law rights within Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits:
i. Its rights in the CITI marks were firmly established before the date of registration of the disputed domain name on May 31, 2021. As a consequence, the Respondent cannot claim or show any rights let alone those which are “superior” to those of the Complainant.
ii. On the evidence of the screenshot of the Respondent’s website dated June 15, 2021, exhibited at Annex 8 to the Complaint, the Respondent is using the disputed domain name in connection with a website that offers online investment services that directly compete with those that the Complainant offers under the CITI marks and through its CITI Global Wealth organization. This is evidence that the Respondent is attempting to trade on the Complainant’s goodwill in the CITI marks, and was well aware of the Complainant, its CITI marks and its trading activity at the time it registered the disputed domain name. The disputed domain name is being used for a website providing services that compete with those provided by the Complainant.
iii. The Respondent is not affiliated with the Complainant in any way and has no business relationship with it.
iv. The Complainant has not provided the Respondent with a license or otherwise authorized the use of the CITI marks.
v. The Respondent is not commonly known by the disputed domain name and has not acquired any legitimate trade mark rights in the disputed domain name.
vi. The Respondent is using the disputed domain name for its own commercial gain. It is misleading users and potential users of the Complainant’s financial services by directing them to its own website rather than that of the Complainant. It is well-established by previous Panel decisions, that such use is not a legitimate purpose.
vii. The Respondent has not made any other demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, which do not otherwise infringe the Complainant’s marks.
In the absence of a Response and evidence to the contrary the Panel accepts these submissions and the evidence adduced by the Complainant. It, therefore, finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that on the basis of the evidence of the Respondent’s website referred to in section 6.B. above, the Respondent was “surely aware” of the Complainant’s marks at the time it registered the disputed domain name.
On the evidence of long use of the Complainant’s CITI marks, the Respondent would have “years of constructive notice” of the Complainant’s registered trade marks.
From the evidence of the Respondent’s website at Annex 8 to the Complaint, it is apparent that the Respondent is using the website to provide online investment management and trading services, which directly compete with the Complainant. It is well-established by previous Panel decisions that the use of the disputed domain name to provide directly competing services is “clear evidence” of registering and using the domain for commercial gain by creating confusion as to the Complainant’s association with the Respondent’s website and that this constitutes bad faith.
Moreover, on the evidence in this Complaint, the Respondent appears to be making fraudulent claims in connection with its website located at the disputed domain name. This can be seen from Annex 8 to the Complaint, where, for example, the Respondent claims that its organization is a “legal company registered in the USA providing its investment services to the members all around the world”. This is coupled with a blurry image of an illegible document, which purports to be a “Certificate of Incorporation”.
Exhibited at Annex 9 to the Complaint is the source code for the website. The circled section allows the viewer to show a clear image of the alleged Certificate. The image is exhibited at Annex 10 to the Complaint. The Certificate states that it is a Certificate of Incorporation of a Private Limited Company certified by the Registrar for England and Wales (and not the United States).
The company is called Pro Income with a registered number, 10757670. The Complainant has checked the corporate registrar’s website which shows that the company registered under that number was called Pamm Bits International but which was dissolved in 2018. There is no record of registration for the company Pro Income.
The Complainant submits that the evidence contained in Annexes 9 and 10 to the Complaint shows that the Respondent is not operating a legitimate business and, instead, is using the disputed domain name for fraudulent purposes.
In the absence of a Response and contrary evidence, the Panel accepts the truth of the evidence adduced by the Complainant and finds on that evidence that the Respondent has registered and used the disputed domain name in bad faith within Paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <citiglobalwealth.org> be transferred to the Complainant.
Clive Duncan Thorne
Date: August 26, 2021