Citigroup, Inc v. Party Night Inc. aka Peter Carrington

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 Respondent’s 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 world’s 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. Parties’

Contentions

A. Complainant

The Complainant contends that the domain names at issue are virtually identical and confusingly similar to the Complainant’s 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 …domain 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 Respondent’s

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."

B. Respondent

The Respondent did not reply to the Complainant’s 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 Complainant’s

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 Respondent’s

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 Respondent’s

pattern

of behaviour

in connection

with the

registration

and use

of domain

names, and

reinforces

the Panel’s

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).

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 names, <citifiancial.com> and <arcadiafinacial.com> be transferred to the Complainant.

George R. F. Souter

Sole Panelist

Dated: August 22, 2003