The Complainant is Citigroup Inc., United States of America (“United States”), represented by Frankfurt Kurnit Klein & Selz, PC, United States.
The Respondent is Andrew Robert Wilson, Andrew Robert Wilson, United Kingdom.
The disputed domain name <citidirect.org> is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 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 April 12, 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 April 12, 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 April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent sent informal email communications on April 13, 2021. The Response was filed with the Center on May 2, 2021.
On May 13, 2021 a supplemental filing was filed by the Complainant and then on May 14, 2021 a supplemental filing was filed by the Respondent.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 19, 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.
The Complainant is a global banking and financial services corporation headquartered in New York in the United States. According to the Complaint, it provides a full line of banking and financial services to its customers through physical branches and online through its website.
It claims to be one of the largest banking groups in the world. According to the Complaint, it has 700 branches in the United States and more than 1,800 “overseas”.
In 2019, it had revenues of USD19.4 billion and assets of USD1,951 billion. It is ranked number 31 in the Fortune 500.
According to the Complaint, the Complainant first used the trademark CITI in connection with its financial services in January 1979. It began using CITIDIRECT in connection with financial and foreign exchange services in November 1998.
The Complainant has submitted evidence that it has registered these signs as trademarks in a large number of countries. For present purposes, it is sufficient to note:
(a) United States Registered Trademark No. 1,181,467, CITI, in respect of a range of banking and financial services in International Class 36 and which was registered on December 8, 1981;
(b) United States Registered Trademark No. 2,261,522, CITIDIRECT, for a full line of banking and financial services in International Class 36 and which was registered on July 13, 1999; and
(c) United Kingdom Registered Trademark No. UK00900679241, CITIDIRECT, which was registered in respect of a range of goods in International Class 9 in addition to the full line of banking and financial services in International Class 36, which was entered on the Register on August 13, 1999.
So far as the record in this proceeding shows, the Respondent registered the disputed domain name on February 23, 2021.
Since about then, it has resolved to a parking page provided by the Registrar which features pay-per-click (PPC) advertising for banking services and credit reports.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for CITI and CITIDIRECT referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.org” gTLD, the disputed domain name consists of the Complainant’s registered trademark CITIDIRECT. It is also the registered trademark CITI and the term “direct”. As this requirement under the Policy is essentially a standing requirement, the addition of descriptive or geographical terms does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. In both cases, the Complainant’s trademark is visually and aurally recognisable within the disputed domain name and, in the case of the CITIDIRECT trademark, comprises the whole of the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s CITIDIRECT trademark and confusingly similar to the Complainant’s CITI trademark. The requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent’s name. Nor any other name by which the Respondent claims to be commonly known and from which the disputed domain name could be derived. The Respondent does not hold any trademarks for the disputed domain name.
The disputed domain name resolves to a parking page on which PPC links are displayed to services competing with the Complainant’s services.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name, particularly bearing in mind how long the Complainant has been using, and had registered rights in, its trademarks before the Respondent registered the disputed domain name.
The Respondent says he did not authorise the Registrar to implement the PPC advertising and had no idea it was occurring. After the Complaint was initiated, he says he contacted the Registrar to complain and received the response:
“The page that is being referred to is a Parking page which is standard across the industry and is usually applied to domain names that do not hold any website services but use the nameservers of the provider. This page can be disabled on any domain at any stage via your control panel.”
The Respondent says further that he has not made any use of the disputed domain name yet. Nor has he attempted to use it. The Respondent says:
“I registered this domain for the same reason I register lots of different domain names. I registered it for future use for a business. Every time I think of a business idea or a domain name that may be good for a business, I register the name. I have lots of different domains, but to date, I have only ever sold one domain name. I only sold that because I was approached by somebody wanting this particular name, and they made me a generous offer, so I sold it. I am not what you would describe as a domain name trader, or what is commonly known as a cyber squatter.
With regards to citidirect.org, the reason why I registered this name was for use in the courier industry, one of the industries I currently work in. My original idea was to use citydirect. The word ‘City, is used by lots of courier/transport companies in the UK, for obvious reasons. The word ‘direct’ is another widely used name in our industry, meaning delivering direct to the customer/consumer.
However, the domain name citydirect was already registered in all extensions, though they were available for sale via domain brokers for a premium. There is a global courier company based in the UK, called citipost.com, and this gave me the idea to try for citidirect. The names citidirect.co.uk and citidirect.org were both available, so I registered them. A few days previously I also registered citicouriers.co.uk / .uk. I also since registered citicabs.co.uk / .uk the same day I registered the disputed domain. These were for use in the cab/taxi industry, which I also have links to.”
It does not appear from the Response that, apart from registering the disputed domain name (and the other domain names referred to), the Respondent has actually taken any steps to use the disputed domain name in connection with the putative courier business. The Response does not include any objective materials supporting this claim. Bearing in mind that the disputed domain name was registered only in February this year, there is nonetheless no evidence of any business formation steps having been taken, steps taken in connection with website development or even the nature of the Respondent’s involvement in the courier industry. See WIPO Overview 3.0, section 2.2. The Response falls short of what is required to demonstrate rights or a legitimate interest in the disputed domain name rebutting the prima facie case established by the Complainant.
Nor is it clear to the Panel how use of “citidirect” for a courier service in the face of “citipost” would qualify as good faith.
Panels have repeatedly held that the use of the disputed domain name to host a web page which is a parking page with PPC links competing with the Complainant’s business does not qualify as use in good faith. See WIPO Overview 3.0, section 2.9. As noted above, the Respondent does say that this was done without his knowledge or permission.
Under the Policy, however, the Respondent is responsible for the use made of the disputed domain name. It was the Respondent’s responsibility to make sure that the disputed domain name which he registered was not being used in a way which conflicted with prior rights. As outlined in WIPO Overview 3.0, section 2.9, the Respondent may avoid that responsibility under the Policy where the use being made by the Registrar, or other host, is in defiance of the Respondent’s instructions or otherwise despite the Respondent’s efforts. Despite a history of registering “lots” of domain names, there is no evidence the Respondent took any such steps in this case. Nor does he claim to have done so.
For these reasons, the Panel finds that the Respondent has not rebutted the prima facie case established by the Complainant that he does not have rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As set out in section 5.B. above, the Respondent denies any knowledge of the Complainant or its trademark before he registered the disputed domain name. The Respondent says, so far as he is aware, the Complainant does not have retail branches or high street operations in the United Kingdom. It is not something he has come across or had reason to encounter.
Annex 4 to the Complaint does include an article in the Guardian from 2017 claiming that the Complainant had 9,000 employees in the United Kingdom at that time. The Complainant’s website at “www.citibank.co.uk” refers to offices in Canada Square, Canary Wharf in London – and at the footer includes UK regulatory statements going back to 2016. In its supplemental filing, the Complainant states it also has offices in Edinburgh, Belfast, Derby and Glasgow. The nature of those offices is not disclosed although the Complainant does say it is the second biggest employer in Belfast. Notably, these are not cities that the Respondent claims he is located in.
The Complainant also refers to “brand partnerships” with high profile and well-known entities including The British Museum, The Evening Standard, Teach First Run the River, and Pride in London. The supplemental filing states that its private wealth management service has more than 200,000 local clients and over 3,500 clients use its CITIDIRECT BE service in the United Kingdom. Further, it points to a consumer survey that discloses “96-97%” brand awareness with consumers in the United Kingdom with “investible assets of GBP30,000 or more. This is said to be comparable to the brand recognition of “Barclays” and “HSBC”, major United Kingdom financial institutions.
There is no suggestion that the Respondent is one of the Complainant’s customers. Nor is there any evidence that he falls within the particular market segment covered by the survey.
Having regard to these matters, the Panel is not able unequivocally to go behind the Respondent’s denial of knowledge of the Complainant.
Lack of actual knowledge, however, is not necessarily determinative where the adoption and use of the disputed domain name would not be consistent with honest commercial practices. Justice Arnold adopted as appropriately reflecting under English law what could qualify as “honest commercial practices” the explanation provided by Advocate General Sharpston in Case C-17/06 Céline Sàrl v Céline SA [2007] ECR I-7041:
“54. A person cannot normally be said to be acting in accordance with honest commercial practice if he adopts a name to be used in trade for purposes of distinguishing goods or services which he knows to be identical or similar to those covered by [an] identical or similar existing trade mark.
55. Nor indeed will mere ignorance of the existence of the trade mark be sufficient to bring the adoption and use of the name within the fold of honest practice. Honest practice in the choice of a name to be used in trade must imply reasonable diligence in ascertaining that the name chosen does not conflict with, inter alia, an existing trade mark, and thus in verifying the existence of any such mark. And a search in national and Community trade mark registers is not normally particularly difficult or burdensome.
56. However, if reasonable diligence has been exercised, and no such mark has been found, then it does not seem possible to assert that the person adopting the name has in that regard acted contrary to honest practices in industrial or commercial matters. In those circumstances, it is of course only exceptionally that there will in fact be a trade mark similar or identical to the name, whose proprietor would wish to prevent use of the name. But if that were to be the case, it seems to me that the trade mark proprietor’s right would be limited by Article 6(1) of the Directive, since the limitation is conditional only on the honesty of the user’s conduct.
57. On the other hand, if a similar or identical trade mark were found, the extent to which the trade mark proprietor could prohibit use of the name would depend on the user’s conduct thereafter. Honest practice would presumably imply at least contacting the trade mark proprietor and seeking his reaction. If he objected to use of the name on reasonable grounds (and any of the circumstances falling within Article 5 would seem, by definition, capable of providing reasonable grounds for objection), then subsequent use of the name objected to would not be in conformity with honest commercial practice.”
See Hotel Cipriani SrL v Cipriani (Grosvenor Street) Limited [2008] EWHC 3022 (Ch) at [150]. His Lordship’s decision was affirmed on appeal: [2010] EWCA Civ 110.
Bearing in mind that the Respondent claims to register “lots” of domain names whenever he thinks it may be good for a future business or (as he said in an email to the Center on April 13, 2021) “that may be worth something now or in the future”, the Panel considers it not unreasonable that the Respondent should have exercised reasonable diligence to ascertain whether the disputed domain name conflicted with prior rights before registering it.
This general understanding is also reflected in decisions under the Policy summarized for example in section 3.2.3 of the WIPO Overview 3.0.
There is no suggestion that the Respondent took any such steps in this case. Moreover, in section 5.B. above the Panel has been unable to accept the reason advanced by the Respondent for registering the disputed domain name. Accordingly, the Respondent cannot rely on the nature of the proposed business to support his registration of the disputed domain name. The Panel finds therefore that the disputed domain name has not been registered in good faith.
Furthermore, its use for a parking page with PPC links competitive with the Complainant’s business is use in bad faith under the Policy.
Accordingly, the Complainant has established all three requirements under 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, <citidirect.org> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: June 1, 2021