Citigroup, Inc. v. Youn-Ki Lee

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Citigroup Inc. v. Lee Yunki

Case No. D2002 - 0042

1. The Parties

The Complainant in this administrative proceeding is Citigroup Inc., a

Delaware corporation with its principal place of business at 399 Park Avenue,

New York, New York 10043, U.S.A.

The Complainant’s authorized representative is Ronald J. Turiello, Jr.,

of Skadden, Arps, Slate, Meagher & Flom, LLP, of Four Times Square,

New York, New York 10036, U.S.A.

The Respondent is Lee Yunki, of 99 oduck chunghwa, puyo, chungnam 323-860,

South Korea.

2. The Domain Name and Registrar

The domain name in issue is <citicard.com> ("the Domain Name").

The Registrar of the Domain Name is BulkRegister.com, of 10 E. Baltimore,

Suite 1500, Baltimore, Maryland 21202, U.S.A.

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received

on January 17, 2002 an e-mail version of a Complaint and on February 13, 2002

hard copies of an Amended Complaint and accompanying documents. The Center

verified that the Amended Complaint satisfies the formal requirements of

the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"),

and the Rules for Uniform Domain Name Dispute Resolution Policy ("the

Rules") and WIPO’s Supplemental Rules for Uniform Domain Name

Dispute Resolution Policy ("Supplemental Rules"). The Complainant

made the required payment to the Center. On February 15, 2002,

the Center formally notified the Respondent that this administrative proceeding

had been commenced, and that date is the formal date of the commencement

of this administrative proceeding.

On January 24, 2002, the Center transmitted via e-mail a request for registrar

verification in connection with this case. On January 28, 2002

BulkRegister transmitted via e-mail to the Center its Verification Response,

stating that the registrant is citicard.com, of 99 oduk chunghwa, puyo,

chungnam 323-860, KR

and that the Administrative and Technical Contacts are as follows:

lee yunki < mailto:galloper@INAME.COM>

99m

99 oduk chunghwa

Puyo

Phone- Chungnam

Fax- KR

The confusing situation revealed by the Center’s enquiry of BulkRegister

is clarified by the Complainant’s submissions, at paragraph 5.A.(vii) to

(xi) below.

No Response has been filed by the Respondent. The Center sent notification

of the Complaint to the Respondent by e-mail at his e-mail address, <mailto:galloper@iname.com>,

and to <citicard.com> (which is nominally the Registrant of the Domain

Name) at the address < mailto:postmaster@citicard.com>. The notification

to the Respondent appears to have been received, but the latter address

was described as having a "permanent fatal error". It is, of course,

the Respondent’s responsibility to provide accurate addresses – so far as

the Center is concerned, it complied with paragraph 2(a) of the Rules. Notification

of Respondent Default was sent on March 11, 2002, and appears

to have been successfully transmitted to the Respondent.

On April 10, 2002 this Panelist was appointed by the Center.

The Panelist has filed a Statement of Acceptance and Declaration of Impartiality,

and his decision is scheduled to be forwarded to the Center by April 24, 2002.

4. Factual Background

(a)The Complainant owns, through its subsidiary, Citicorp, U.S. Trade

Mark No. 1,024,861 protecting the mark CITICARD ("the Trade

Mark"). This was originally granted to First National City Bank on

November 11, 1975. The Trade Mark has also been registered in

37 other countries, including South Korea.

(b)The Complainant, through its subsidiary Citibank, N.A. owns the

domain name <citicards.com>, registered on November 18, 1999.

(c)The Domain Name was registered on February 7, 2000.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:

(i) The Complainant is the world-renowned financial services company that,

through its wholly owned subsidiaries Citicorp and/or Citibank, N.A., owns an

extensive family of famous CITI and CITI-prefixed service marks and trademarks

(the "CITI Marks"), including such famous marks as the Trade Mark, CITI, CITIBANK,

CITICORP, CITIGROUP, CITIBANKING, and THE CITI NEVER SLEEPS. From 1994 through 2000,

the Complainant has spent in excess of $3 billion advertising its CITI

family of marks throughout the world and in 2000 alone generated over $ 77.6

billion in net revenues using its CITI family of marks, including the Trade

Mark in connection with its financial services.

(ii) The Complainant was formed on October 8, 1998, following the

business combination between two well-known companies, Citicorp and Travelers

Group Inc. The Complainant provides a broad range of financial services to consumers

and corporate customers, including traditional commercial banking services such

as checking accounts, savings accounts, and loans, credit and debit cards, insurance,

travelers checks, mortgages, bill payment services, brokerage services and investment

advisory services.

(iii) The Complainant has an active presence worldwide, and provides services

throughout Asia, including in Korea, where it operates 12 Citibank branches.

Furthermore, the Complainant has registered 6 domain names in Korea, including

<citicard.co.kr>.

(iv) In June 2001, the Complainant learned that the Respondent had registered

the Domain Name with Network Solutions, Inc. The Domain Name was registered

by the Respondent on February 7, 2000. Until recently the "citicard.com"

web site featured a blank screen with two hypertext links. The first hypertext

link, labeled "US Citibank cards members" directed users to one of Citibank's

Internet web sites for its credit card customers. The only other link on the

<citicard.com> web site was a link to <sportsbetting.com>, an Internet

gambling site. In the event that the user did not click on either of the aforementioned

hypertext links, within approximately 10-15 seconds, the user was automatically

redirected to the <sportsbetting.com> web site. Aside from the Respondent's

use of the Trade Mark in the Domain Name, the Respondent made no other use of

the Trade Mark on his web site.

(v) Upon information and belief, the Respondent received a referral fee from

<sportsbetting.com> for each user he automatically directed to <sportsbetting.com>

who gambled on that site. According to the <sportsbetting.com> referral

fee policy, the Respondent would have received from 25% to 50% of all net "house"

profits <sportsbetting.com> earned from the members the Respondent directed

to the site.

(vi) The Complainant conducted a WHOIS query of domain names registered by

the Respondent on December 11, 2001, which search uncovered over 150

names. In addition to Citigroup, many of the Respondent's registered domain

names feature the names or marks of well-known corporations including Nike,

Microsoft ("Windows"), Singapore Airlines, Samsung and well-known Korean banks

such as Nation Bank, Hana Bank, and Han Mi Bank.

(vii) On June 28, 2001, the Complainant's Representative sent a cease and letter

to the Respondent by electronic mail and Federal Express to the address listed

in the WHOIS directory. The letter asserted the Complainant's rights in and

to the Trade Mark, stated that the Respondent's registration and use of the

Domain Name created a likelihood of confusion between the parties, and demanded

that the Respondent immediately stop using the Domain Name and relinquish rights

to and assign the Domain Name to Complainant. The hard copy of the letter was

returned to the Complainant's Representative as undeliverable, because the Respondent

did not reside at the address listed in the WHOIS directory. The electronic

version of the letter, however, evidently was received by the Respondent, because

he then modified the Domain Name Site in response to one of the Complainant's

objections. Specifically, the Respondent removed the link to Citigroup's web

site.

(viii) On August 23, 2001, the Complainant's Representative sent a follow-up

cease and desist letter (the "8/23 Letter") to the Respondent by electronic

mail, again asking that the Respondent immediately cease all use of the Domain

Name and transfer to Citigroup the Domain Name. The Complainant included the

necessary paperwork to effect transfer of the Domain Name and stated that it

would bear the expense of transferring the Domain Name.

(ix) The Complainant also hired the South Korean law firm of Kim & Chang

("South Korean Representative") to locate the Respondent's true address and

hand deliver a hard copy of the letter. On August 28, 2001, the Complainant's

South Korean Representative attempted to deliver the 8/23 Letter to the

address listed in the WHOIS directory. The Respondent's parents resided at the

listed address and provided Complainant's South Korean Representative with the

Respondent's current address, telephone number and mobile telephone number.

On August 29, 2001, the Complainant's Representative served the 8/23

Letter on Respondent by hand delivery at his updated address: #1013 Hyundai

Goldentel, 1337-2, Seocho-2-dong, Seocho-ku, Seoul, Korea. The Respondent personally

signed for and received the letter.

(x) The Respondent never responded to either cease and desist letter. Shortly

after the Respondent received the second letter, however, the Domain Name Site

was disabled, evidently in response to the Complainant's correspondence. Currently,

the Domain Name Site remains inactive and automatically redirects users to the

Respondent's inactive <cardnow.com> website.

(xi) On January 17, 2002 at 15:56, The Complainant's Representative simultaneously

e-mailed a copy of the Complaint to the Center, to Network Solutions (the listed

Registrar at that time) and to the Respondent. On January 17, 2002

at 18:34 the Respondent switched his Registration for the Domain Name from Network

Solutions to BulkRegister.com, evidently in an effort to avoid this proceeding.

(xii) The Respondent has intentionally attempted to attract, for commercial

gain, Internet users to his website by creating a likelihood of confusion with

the Trade Mark as to the source, sponsorship, affiliation or endorsement of

the website. In particular, the Respondent used the Domain Name to automatically

redirect the Complainant's customers to the <sportsbetting.com> web site

from which the Respondent was eligible to receive a referral fee for those consumers

who gambled on the linked site.

B. Respondent

As noted above, no Response has been filed.

6. Discussion

The onus is on the Complainant to prove each of the three elements set

out in paragraph 4(a) of the ICANN Policy, as follows:

(i) the domain name is identical or confusingly similar to a trade mark or

service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) the domain name has been registered and is being used in bad faith.

As to element (i), the Domain Name is plainly identical to the Trade Mark.

As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent

has done nothing to demonstrate that he has any rights or legitimate interests

in the Domain Name. There is nothing to suggest that any of the circumstances

mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice

of the dispute preparation to use the Domain Name, being commonly known

by the Domain Name or making a legitimate non-commercial or fair use of

the Domain Name). The facts put forward by the Complainant suggest that

the Respondent's interest in the Domain Name was not in connection

with a bona fide offering of goods or services, but rather to take

advantage of the reputation of the Complainant's Mark to attract potential

customers to his own Internet site, deriving income from those who, having

been referred on to the "sportsbetting.com" web site, then proceeded

to gamble on that site. In the absence of any justification from the Respondent

of his activities in relation to the Domain Name, the Panelist concludes

that the Complainant has established element (ii).

So far as element (iii) is concerned it is sufficient that the Complainant

demonstrates that one of the four circumstances mentioned in paragraph 4(b)

of the ICANN Policy applies.

Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person

as follows:-

"by using the domain name, [respondent has] intentionally attempted

to attract, for commercial gain, Internet users to [his] web site or other

on-line location, by creating a likelihood of confusion with the complainant's

mark as to the source, sponsorship, affiliation, or endorsement of [respondent's]

web site or location, or of a product or service on [respondent's] web

site or location."

Given the undoubted worldwide fame of the Trade Mark, the inference that

the Domain Name was registered in bad faith is irresistible. The fact that

the Respondent’s web site originally included a link to the Complainant’s

web site <citigroup.com> merely underlines that the Respondent was

fully aware of what he was doing. In the light of the circumstances alleged

in paragraph 5(A)(iv) and (v) above it is clear that the Respondent's activities

come within the terms of (iv) of paragraph 4(b) of the Policy. If further

evidence of the Respondent’s bad faith were required, that is provided by

his failure to provide Bulk Register with contact details which are sufficient

to locate him (other than by e-mail).

The Panelist therefore concludes that the Respondent registered and has

been using the Domain Name in bad faith.

7. Decision

In the light of the findings in paragraph 6 above, the Panelist concludes

that:-

- the domain name <citicard.com> is identical to the trade mark CITICARD

of the Complainant;

- the Respondent has no rights or legitimate interests in the domain name;

- the domain name has been registered and is being used in bad faith.

Accordingly, the Panelist orders that the Domain Name <citicard.com>

be transferred to the Complainant, Citigroup Inc.

Christopher Tootal

Sole Panelist

Dated: April 23, 2002