Citicorp; Citigroup Inc. v. Phayze Inc.

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 Respondent’s 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.

Complainants’ 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. Parties’ Contentions

A. Complainants

The Domain Name is confusingly similar to Complainants’ marks.

Respondent’s Domain Name fully incorporates Complainants’ famous CITI Mark,

is confusingly similar to Complainants’ CITI and CITIBANK Marks, and mimics

Complainants’ CITIBANK Domain Names. Indeed, the Domain Name is an obvious and

minor alteration of Complainants’ famous CITIBANK mark and domain names in that

it replaces one letter for another – namely the letter "c" for the letter "n."

Furthermore, there is evidence of actual confusion caused by Respondent’s 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 Complainants’ 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, Respondent’s 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.

Respondent’s Domain Name is nearly identical and is confusingly similar to

the Complainants’ 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 Complainants’ CITI and CITIBANK Marks are nearly

identical and are confusingly similar, individuals confronting Respondent’s

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) Respondent’s notice

of Complainants’ 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 Complainants’ marks; (ii) Respondent’s "www.citiback.com"

web site connects to web pages that compete with Complainants’ business; (iii)

Respondent has failed to reply to Complainants’ attempted communications; (iv)

Respondent has provided false contact information; (v) Respondent’s use violates

specific representations made by Respondent in the Registrar’s Registration

Agreement; and (vi) Respondent has evidenced a pattern of bad faith registration

and use.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel agrees with Complainants’ assertions that Respondent has registered

a domain name that mimics Complainants’ domain name, and that it is an obvious

and minor alteration of Complainants’ famous CITIBANK mark and domain names,

which leads the domain name at issue to be confusingly similar with Complainants’

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 Complainants’ trademarks are

famous, Respondent has undoubtedly been familiar with these when registering

its domain name that was nearly identical and confusingly similar to Complainants’

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 Complainants’ assertions and evidence with regard

to the Respondent’s 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 Respondent’s registration and use of the domain name at issue appears

to be an intentional attempt to capitalize upon a likely confusion with Complainants’

trademark and/or domain name CITIBANK.

The Panel also finds that Respondent has failed to reply to Complainants’ attempted

communications and that he has provided false contact information. Furthermore,

the Panel takes into consideration that Respondent’s use violates specific representations

made by Respondent in the Registrar’s 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.

7. Decision

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

Sole Panelist

Dated: August 7, 2003