Wwwcitibankonline.com

The timeline behind wwwcitibankonline.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Citigroup Inc. v. Vanita Sehgal Claim Number: FA0603000670048 PARTIES Complainant is Citigroup Inc. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Vanita Sehgal (“Respondent”), 522, Shantivan MAHADA, Lokhandwala Complex, Mumbai, Maharashtra 400053, IN. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <wwwcitibankonline.com>, registered with Lead Networks Domains Pvt. Ltd. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Paul M. DeCicco, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 30, 2006. On April 10, 2006, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwcitibankonline.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that the Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On April 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wwwcitibankonline.com by e-mail. A timely Response was received and determined to be complete on May 2, 2006. Complainant filed its Additional Submissions on or about May 5, 2006. The Panel duly considered the Additional submissions. On May 8, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant contends as follows: Citigroup is the world-renowned financial services company that owns an extensive family of famous trademarks and service marks comprised of or featuring the CITI trademark (the “CITI Marks”). In addition to U.S. and Indian rights, the CITI Marks are applied for or registered in approximately 200 countries throughout the world. Among other applications and registrations, the mark CITI, U.S. Reg. No. 1,181,467 (incontestable status), 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 mark CITIBANK, U.S. Reg. No. 0691815 (incontestable status), was registered on January 19, 1960 for “banking services”; and the mark CITIGROUP, U.S. Reg. No. 2,406,753, was registered on November 21, 2000 for “full range of insurance and financial services; banking services; credit card services; securities trading, consulting and underwriting services; investment services. Complainant has made extensive use of these marks by providing its services throughout the United States, in India, and around the world. Due to the extensive use and registration of the CITI Marks around the world, the marks have become famous under the laws of the United States and other relevant jurisdictions. Respondent registered the at-issue domain name on December 9, 2003; decades after Complainant began extensive marketing of its goods and services under its marks. Complainant has not given Respondent any license, permission, or authorization by which Respondent could make any use of any of its marks. The at-issue domain name resolves to a website featuring links promoting the goods and services of others, including financial and travel services such as Capital One and Wells Fargo. Other links lead to the websites of others featuring goods and services, which may or may not compete with Complainant. The at-issue domain name is confusingly similar to Complainant’s marks because it fully incorporates Complainant’s CITI and CITIBANK marks. The at-issue domain name takes advantage of a common typographical error many Internet users makes and places “www,” a common top-level designator for domain names, to the beginning of Complainant’s mark and then follows Complainant’s mark with the generic term “online.” This does not distinguish the domain name from Complainant’s mark. Respondent lacks rights or legitimate interests in the Offending Domain. Respondent, Vanita Sehgal, has never been commonly known as <wwwcitibankonline> or any variations thereof, and has never used any trademark or service mark similar to the at-issue domain name by which it may have come to be known. Respondent has never operated any bona fide or legitimate business under the at-issue domain name and is not making a protected non-commercial or fair use of the at-issue domain name. Respondent was aware of Complainant’s marks prior to the registration of the at-issue domain name, given their considerable registration and/or use. Complainant has not granted Respondent any license, permission, or authorization by which he could own or use any domain name registrations, which are confusingly similar to any of Complainant’s marks. Respondent registered and is using the at-issue domain name in bad faith. Respondent knew or should have known of such marks at all relevant times. Respondent had actual or constructive knowledge that the at-issue domain name, which mimics and/or incorporates Complainant’s registered marks, is confusingly similar to Complainant’s marks. This knowledge is more than sufficient for a finding of bad faith registration. Internet users are likely to be induced to believe that the at-issue domain name connects to websites associated with or sponsored by Complainant. Respondent receives ad revenue from the advertisements found on the website to which the at-issue domain name resolves, and therefore Respondent is using the Offending Domain in bad faith, in an attempt to attract maximum traffic to the site for commercial gain. Through registration and use of the Offending Domain, which fully incorporates Complainant’s CITI and CITIBANK marks and is merely a common misspelling of Complainant’s CITIBANKONLINE.COM domain name, Respondent is opportunistically attempting to trade on the goodwill built up in Complainant’s marks. B. Respondent Respondent contends as follows: This is not a fit case under the UDRP; the Complaint should be dismissed for this reason alone. The Complainant has not made a case under the UDRP. There is no way the Complainant can prove that the domain is its trademark. The Complainant also has not proved bad faith as required under the UDRP and the Complainant needs to be dismissed. The Respondent is unaware of the various trade marks held by the Complainant. The Complainant cannot make a claim to all the domains and all the words containing the four letters ‘c’ ‘i’ ‘t’ ‘i.’ The term “citi” is generic and the Complainant does not have trademark rights in “citi.” The Complainant may have trademark rights in “citi” along with other attached words, but it cannot claim all domains or words having “citi” in it as its own. The at-issue domain name has been in use by Respondent since December 2003. A skilled person would not make the mistake of logging on the website of the Respondent when looking for the services of the Complainant. There is a vast difference in the trademarks of the Complainant and the domain name of the Respondent. Respondent has a legitimate interest in the domain as she is in the business of selling domains, has developed a business around it, and the Complainant is now trying to grab her business in the guise of the UDRP proceedings. Respondent has never offered to sell the domain to the Complainant or demanded any monies from them for the use of the domain. That Respondent has been generating ad revenue from a search engine does not constitute as bad faith. Respondent’s address and the email address are correctly listed with the registrar. Not providing telephone numbers to avoid sales calls does not constitute wrong WHOIS information. C. Additional Submissions In its additional submission Complainant contends: Respondent is actively engaged in a pattern of abusive domain name registrations. Respondent has purposefully falsified the WHOIS information for his domain names. Respondent altered the WHOIS information for the at-issue domain name and other domain names. Respondent has attempted to mislead the Panel into thinking that Complainant has failed to comply with all formalities. FINDINGS Complainant Citigroup is the world-renowned financial services company that owns an extensive family of famous trademarks and service marks comprised of or featuring the CITI trademark; the mark CITIBANK, U.S. Reg. No. 0691815 was registered with the United States Patent and Trademark Office (“USPTO”) on January 19, 1960 for “banking services.” Respondent is in the business of buying and selling domain names. Respondent registered the at-issue domain name on December 9, 2003, to trade on the Complainant’s CITIBANK mark. The at-issue domain contains the CITIBANK mark. The Respondent’s website addressed by at-issue domain name generated revenue via click through fees. Some of the links on that website referenced Complainant’s competition. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has established rights in the CITIBANK mark by registering the mark with the USPTO and with the relevant trademark authorities in India. Complainant’s trademark registrations establish its rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003). The at-issue domain name is confusingly similar to Complainant’s marks because the domain name fully incorporates Complainant’s CITI and CITIBANK marks. See Federated Western Prop., Inc. v. Chan, D2003-0472 (WIPO Sept. 17, 2003; Citigroup Inc. v. Acme Mail, FA 241987 (Nat. Arb. Forum Apr. 12, 2004). Respondent’s addition of the common Internet terms “www” and “online” to Complainant’s CITIBANK mark in the at-issue domain name does not vitiate the domain name’s confusingly similarity to the Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000). Respondent’s contention that Complainant’s marks are of common use (or generic) and that therefore Complainant does not have exclusive rights to the contained terms, is without merit. A mark registered on the USPTO’s Principal Register for more than five years, such as Complainant’s mark, is considered incontestable under U.S. trademark law. In cases involving properly registered marks, the respondent has the burden of proving the mark is generic. See generally Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143 (9th Cir. 1999). Respondent has failed to satisfy this burden. Therefore, Complainant has shown that it has rights in a mark that is confusingly similar to the Respondent’s domain name. Rights or Legitimate Interests The WHOIS information lists the Registrant of the domain name as “Vanita Sehgal.” There is no evidence indicating that Respondent is commonly known by the disputed domain name. Respondent was neither authorized nor licensed to register or use a domain name incorporating Complainant’s CITIBANK mark. Therefore, Complainant urges that the Respondent does not have rights or legitimate interests in the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001). Complainant thus established a prima facie case that Respondent lacks rights and legitimate interests in the at-issue domain name. Respondent appears to argue that using the disputed domain names to operate a portal web directory constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). However, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because the <wwwcitibankonline.com> domain name resolves to a website containing links promoting the goods and services of others, including Complainant’s competitors in the financial and travel services industries. Additionally, Respondent is misdirecting Internet users seeking Complainant’s services to its own website for commercial gain in the form of click-through fees. Such activity does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003). Likewise, Respondent’s admission to being a domain name reseller fails to persuade the Panel that Respondent has rights in the at-issue domain name since, as mentioned above, the at-issue domain name is comprised of, and confusingly similar to, the Complainant’s protected trademark. For the reasons stated above, Respondent has failed to meet it burden to overcome Complainant’s showing that Respondent lacks rights and has no legitimate interest in the at-issue domain name. Registration and Use in Bad Faith Actual or constructive knowledge of a commonly know mark at the time of registration is evidence of bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000). Given the considerable registration and use of the CITI Marks, Respondent knew or should have known of such marks at all relevant times. Importantly and tellingly, Respondent offers no credible explanation whatsoever as to why Respondent decided to register the <wwwcitibankonline.com> domain name. Respondent simply claims that the terms in the at-issue domain name are generic. The inference drawn from Respondent’s conspicuous silence on such a crucial issue and the lack of any credible benign explanation for registering the particular domain name is that Respondent registered the at-issue domain name precisely because of the domain name’s trademark value and notoriety, rather than in spite of it. Respondent is also engaging in typosquatting. Complainant owns a commercial website addressed by <citibankonline.com>. Internet users seeking Complainant’s website at <citibankonline.com> who mistakenly omit the period after “www” will be directed to Respondent’s website rather than Complainant’s website. A predictable and intended result is that such users may be confused regarding the source and affiliation of Respondent’s website. Such activity constitutes bad faith. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) regarding <wwwdewalt.com>; see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) regarding <wwwremax.com>. Respondent is thus shown to be in bad faith pursuant to the Policy ¶ 4(b)(4). Even if Internet users are not actually confused, Respondent nevertheless intended to misdirect those looking for Complainant’s online business to Respondent’s own revenue generating website. Respondent is thereby attempting to trade on the goodwill built up in Complainant’s marks. Such activity further demonstrates bad faith registration under the Policy. See KnightRidder.comJKnight Publ’g Co. v. Baltic Consultants Ltd., FA 96944 (Nat. Arb. Forum Apr. 30, 2001). Respondent has thus registered and used the at-issue domain name in bad faith. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <wwwcitibankonline.com> domain name be TRANSFERRED from Respondent to Complainant. Paul M. DeCicco, Panelist Dated: May 22, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.