citimorgage.com

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Citigroup Inc. v. Ian Templeton

Case No. D2002-0231

1.1 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.

1.2 The Respondent in this administrative proceeding, according tothe WHOIS database of Joker.com, is Ian Templeton, Woodlands, Leylodge, Kintore, Aberdeenshire, Scotland AB51 OXY, United Kingdom.

2.1 The Domain Name, the subject of this dispute, is <citimorgage.com>.

2.2 The Domain Name is registered with CSL BmbH d/b/a joker.com, Rathausufer 16, D-40213, Duesseldorf, Germany.

3.1 The Complaint was initially filed electronically on March 9, 2002 and by hardcopy on March 18, 2002.

3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.

3.3 No legal proceedings have been initiated, as yet. (Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), paragraph 3(b)(xi)).

3.4 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500.00 has been made, payable to World Intellectual Property Organization.

3.5 The Complainant agreed that its claim and remedies concerning the registration of the Domain Name, the dispute, or the dispute’s resolution shall be solely against the Domain Name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned Registrar, (c) the Registry Administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees and agents.

3.6 On March 15, 2002, the WIPO Arbitration and Mediation Center ("the Center") transmitted via e-mail a request for registrar verification to CSL BambH in connection with this case. The Center received a verification response from the Registrar that same day.

3.7 Notification of Complaint and Commencement of Administrative Proceeding was sent to Respondent by the Center on March 21, 2002.

3.8 On April 10, 2002 a Response was filed electronically, with a hardcopy filed on April 11, 2002.

3.9 In accordance with paragraph 15 of the Rules, the single Panel member, Cecil O.D. Branson, Q.C., submitted a Statement of Acceptance and Declaration of Impartiality and Independence, and was duly appointed on April 19, 2002. The Panel was required to forward its decision to the Center by May 3, 2002.

3.10 The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

4.1 Complainant Citigroup Inc. says (in its own words) as follows:

Citigroup Inc., is the world-renowned financial services company that, through its wholly owned subsidiaries Citicorp and Citibank, N.A., owns an extensive family of famous CITI and CITI-prefixed service marks and trademarks (the "CITI Family of Marks"), including such famous marks as CITI, CITIBANK, CITICORP, CITIGROUP, and THE CITI NEVER SLEEPS. Complainant's CITI trademark ("CITI Mark"), U.S. Reg. No. 1,181,467, was registered on December 8, 1981 for financial services including, mortgage financing and servicing, credit card services, consumer and industrial loans, real estate lending and investment and financial advisory services. As part of its famous family of CITI Marks, Complainant also owns a federal application for CITIMORTGAGE, U.S. App. 75/771125, which was filed on August 9, 1999 for commercial and consumer lending and mortgage, brokerage and mortgage lending services ("CITIMORTGAGE Mark").

Complainant's CITI-prefixed Family of Marks has unquestionably been famous since at least 1980, and today the family includes more than 140 federally registered marks or applications. See CIT Group v. Citicorp, 20 F. Supp. 2d 775, 783 (D.N.J. 1998) (finding CITI Family of Marks famous); Citigroup Inc. v. City Holding Co., 2001 WL 1335645, at *17 (S.D.N.Y. Oct. 30, 2001) (same). From 1994 through 2001 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 in connection with its financial services, including mortgage and financing services. Among other financial services, Complainant is renowned for its mortgage services.

Complainant was formed on October 8, 1998, following the business combination between two well-known companies, Citicorp and Travelers Group Inc. (the "Merger"). Complainant provides a broad range of financial services to consumers and corporate customers, including traditional commercial banking services such as mortgages, checking accounts, savings accounts, loans, credit and debit cards, insurance, travelers checks, bill payment services, brokerage services and investment advisory services.

Since as early as 1973, Complainant and its predecessors-in-interest have offered throughout the United States and subsequently worldwide, a variety of mortgage services under marks comprised of and or featuring the CITI-prefixed Marks, including, without limitation the following: CITICORP and CITIBANK.

CitiMortgage, Inc. of Delaware ("CitiMortgage") is Complainant's subsidiary which since its inception has engaged in mortgage banking and other housing-related financing activities. CitiMortgage was first incorporated as "Citicorp Homeowners Services, Inc." ("Citicorp Homeowners") on September 24, 1979, as an indirect wholly-owned mortgage banking subsidiary of Citicorp. In or about September 1987, Citicorp Homeowners was renamed Citicorp Mortgage. In 1999, following the Merger, Citicorp Mortgage shortened its name to CitiMortgage, consistent with Complainant's branding strategy of featuring CITI and CITI-prefixed marks.

Complainant's nationwide mortgage business under its CITIMORTGAGE Mark is quite substantial. In 1998, CitiMortgage made 70,230 mortgage loans throughout the United States totaling $15.9 billion, and serviced over 483,000 mortgage loans nationwide, totaling $61.7 billion. As of April 2000, CitiMortgage was servicing more than 866,000 outstanding mortgages nationwide totaling $93 billion.

Complainant filed the U.S. federal application (75/771,125) for the CITIMORTGAGE Mark for commercial and consumer lending and mortgage, brokerage and mortgage lending services on August 9, 1999.

Complainant is the owner of a domain name featuring the CITIMORTGAGE Mark, namely "citimortgage.com", registered January 7, 2000, as well as approximately 800 domain names featuring the CITI Mark, including "citibank.com" (registered February 2, 1991), "citigroup.com" (registered April 6, 1998) and "citi.com" (registered December 29, 1998). On its "citimortgage.com" web page, Complainant offers numerous products and services relating to mortgage lending under the CITIMORTGAGE name. On Complainant's "citimortgage.com" web site, Consumers may, among other things, apply for a loan, make a mortgage payment, check the status of a loan application, receive information about different types of mortgages and obtain mortgage interest rates.

The Complainant has an active presence worldwide, and provides services throughout Europe, including in the United Kingdom, where it operates six Citibank branches. The Complainant also operates its <citibank.com/uk> web site through which it offers customers in the United Kingdom banking, investment, credit card and other financial services. In addition, Complainant has received extensive unsolicited press coverage throughout the world and in the United Kingdom, including numerous articles about the Merger andComplainant's financial services including its mortgage services in such publications as the Financial Times (London), Financial Advisor, Daily Mail, Financial News, Lloyd's List and The Independent.

Respondent registered the Domain Name on July 2, 2000, almost a year after Complainant filed its federal trademark application for the CITIMORTGAGE Mark, and more than six months after Complainant's registration of Complainant's <citimortgage.com> domain name.

Respondent uses the Domain Name to direct Internet users to Respondent's Mortgage Finder web site, where Respondent provides financial advice regarding mortgages. On its web site, Respondent describes Mortgage Finder as "an Independent specialist mortgage marketing company." In addition, Internet users may apply on-line for a mortgage in the United States on Respondent's <citimorgage.com> web site. When a user clicks on the hypertext link to apply on-line for a mortgage, he/she is automatically redirected to http://nosalesperson.com, a web site which, like Respondent's web site, provides similar financial advice regarding mortgages and an on-line mortgage application.

Moreover, Internet users may also be directed to Respondent's Mortgage Finder UK web site, "mortgagefinder.co.uk" through Respondent's <citimorgage.com> web site by clicking on the Mortgage Finder UK logo featured at the top of the web page. Respondent's Mortgage Finder UK web site also states that Mortgage Finder is "an Independent specialist mortgage marketing company." On Respondent's Mortgage Finder UK web site, Respondent also provides financial advice regarding mortgages, life insurance and personal loans.

On September 13, 2001, Complainant's Representative sent a cease and desist letter to the Respondent by electronic mail and Federal Express to the address listed for the Respondent in the WHOIS directory (the "9/13 Letter"). In the 9/13 Letter, Complainant asked that Respondent immediately cease all use of the Domain Name and transfer to Complainant the Domain Name. 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.

On September 25, 2001, Respondent sent an e-mail to Complainant's Representative stating that he received the 9/13 Letter by Federal Express and that he would respond to the 9/13 Letter "in due course." (the "9/25 Letter").

On October 1, 2001, Respondent sent an e-mail and attached document to Complainant's representative responding to the September 13, 2001 Letter (the "10/1 Letter"). In the 10/1 Letter, Respondent admitted, among other things, that he registered the Domain Name seven months after Complainant registered its <citimortgage.com> domain name. Further, in the 10/1 Letter, Respondent never claimed a right to use the CITIMORTGAGE Mark. Instead, Respondent admitted that Mortgage Finder is his trademark, not CITIMORTGAGE (or CITIMORGAGE) and accused Complainant of being responsible for enabling him to secure the Domain Name because Complainant did not register every typographical variation of its "citimortgage.com" domain name and Mark.

On December 21, 2001 Complainant's representative contacted Respondent by telephone and offered Respondent $1,000 for the transfer of the Domain Name to the Complainant. On January 15, 2002, Respondent contacted Complainant's Representative and declined this offer. In both conversations, Respondent attempted to use the Domain Name to extract a business relationship with the Complainant. In both conversations, Complainant informed Respondent that it was not interested in pursuing a business relationship with him

4.2 The Respondent disagrees with some of the Complainant’s factual assertions. Those which this Panel feels are material will be dealt with below in para. 5, under the Respondent’s portion of "Parties Contentions". I reject the assertions not supported by documentation, such as that the Complainant was "world-renowned" and that its services are offered "worldwide"; however, this Panel does accept that the Complainant provides services throughout Europe, including the U.K. where it operates six Citibank branches. It is also accepted that it operates the multitude of financial services referred to above.

5.1 Complainant asserts that Respondent’s <CITIMORGAGE.COM >Domain Name "is nearly identical and confusingly similar" to marks in which Complainant has prior and superior rights in that in appropriates Complainant’s internationally famous CITI Mark and CITI-prefixed Family of Marks and its corresponding domain names thereunder in that the Domain Name fully incorporates Complainant’s CITI mark and it is confusingly similar to its CITI-prefixed family of marks and corresponding Domain Names.

5.2 Complainant says that Respondent has no rights or legitimate interest in the Domain Name because Complainant has found no evidence that Respondent has ever been commonly known by <citimorgage.com>, or that Respondent has used the name "citimortgage" or "citimorgage" to designate products or services it provides. To the contrary, nowhere on Respondent's Mortgage Finder site, to which <citimorgage.com> users are redirected, is there any mention of "citimorgage" or "citimortgage." Upon information and belief, the Complainant asserts that Respondent has never used any trademark or service mark by which it may have come to be known as Citimorgage.

5.3 Complainant alleges that Respondent registered and has used the disputed Domain Name in bad faith which is said to be evidenced as follows:

(i) Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with, or otherwise mislead Internet users with respect to, Complainant's CITIMORTGAGE Mark. Specifically, Respondent used the Domain Name to direct Complainant's customers to Respondent's <mortgagefinder.co.uk> website from which Respondent offers mortgage services identical to that of the Complainant. See Annex 14, (Printouts of Respondent's <mortgagefinder.co.uk> web site).

(ii) Respondent's registration and use of the Domain Name is in bad faith because he exploits an obvious misspelling and mis-typing of Complainant's <citimortgage.com> Domain Name. In addition, on his <citimorgage.com> and <mortgagefinder.co.uk> web sites, Respondent features links to a United States affiliate which offers mortgage services identical to Complainant's mortgage services. (Annex 12-14: printouts from Respondent’s web-sites).

(iii) Respondent further registered and is using the Domain Name in bad faith in order to capitalize on the CITI name and to link customers who misspell "CITIMORTGAGE" as "CITIMORGAGE" to Respondent's own Mortgage Finder site, which offers similar mortgage services as Complainant offers on its <citimortgage.com> web site. Respondent's <CITIMORGAGE.COM> Domain Name fully incorporates Complainant's CITI Mark and merely adds as a suffix the generic financial word (or misspelling) "mortgage," mimicking Complainant's well-established and famous CITI-prefixed Family of Marks and domain names, which frequently feature CITI as a prefix to a financial term (e.g., CITIBANK and <citibank.com>; CITICARD and <citicards.com>). As Complainant's famous CITI Family of Marks are well-known throughout the world, it is "very unlikely, if not nearly impossible, that, when Respondent registered or acquired the Domain Name, it wasn't aware that it was infringing on Complainant's trademark rights."

(iv) Further, according to the Registrar's domain name registration policy, Respondent was required to "ensure to the best of knowledge and belief that registration and subsequent direct or indirect use of the domain do not infringe third-party rights and [that Respondent] warrants that no such rights are infringed." (Annex 2, para.5, Registrar's General Terms and Conditions of Registration). Respondent could have easily conducted a trademark or domain name search to ensure that the Domain Name did not infringe Complainant's trademark rights. Had Respondent conducted even a preliminary search, he would have found Complainant's CITI Marks and domain name registrations, and its CITIMORTGAGE application and domain name registration, along with numerous other CITI prefixed Marks and domain names owned by Complainant. (Annex 5 - List of CITI Family of Marks). Such a failure to conduct a trademark search is evidence of bad faith.

(v) Furthermore, as stated above, there is no evidence of an intention to use the Domain Name in connection with a bona fide offering of goods and services bearing a mark that matches such Domain Name, nor could there be here, given that it features an incorrectly spelled term.Neither the Respondent nor his business, Mortgage Finder has ever been commonly known by the domain name, and has acquired no trademark or service mark right in the CITIMORGAGE name. Further, neither Respondent or his business, Mortgage Finder has ever used the Mark on its web site, or in a product or service name they provide. (Annex 12-14: Printouts from Respondent's <citimorgage.com> web site).

The Response to the allegations of the Complainant concerning the name being identical or confusingly similar are summarized as follows:

5.4 Respondent asserts that CITIMORTGAGE is NOT yet a Trade Mark and is only on the Pending list as such in the USPTO and, further, that CITIMORGAGE is definitely NOT a Trade Mark nor has any application ever been made for it to be one.

5.5 In response to the assertion of Complainant that Respondent uses the Domain Name to direct Internet users to Respondent’s Mortgage Finder web-site, as above, Respondent says "Mortgage Finder represents a clear and uninterrupted image of being an ‘Independent specialist mortgage marketing company’ which is indeed true of its identity and completely to the contrary of what Citibank is or indeed Citimortgage is. They represent only themselves and are therefore NOT in any way whatsoever Independent."

5.6 Respondent states "Furthermore the Mortgage Finder American web site is also clearly defining its own Independence in that it offers the enquirer the services of at least three independent mortgage options which again is NOT on offer from Citibank or Citimortgage as they only represent one service namely their own, which means NO choice."

5.7 Respondent goes on to argue that "citimorgage.com" is an ex directory/unlisted number which points to the clearly UK web site of MORTGAGE FINDER.

5.8 The Respondent takes issue with Complainant’s version of the several telephone conversations between representatives of the parties saying that the Complainant asked the Respondent if "it wanted some money for the domain" to which Respondent replied was that it had not been its intention in ownership to sell the domain. "The Complainant’s legal representative energetically persisted with the view that a sum of money may be made available and suggested that they may offer me $1000 in this connection. I advised that I was not interested in such an offer and that I would rather have a business relationship with people than for them to pay me money in this way. They were asked by us to put these matters in writing as a matter of record, they never did. I consider their corruption of what had been said to them to be dangerously irresponsible and possibly a desperate attempt to discredit us in any way they can and does expose their lack of understanding regarding such matters."

5.9 The Respondent goes on to say that for the domain names to be ‘nearly identical’ as the Complainants try to make out "is surely like saying that an orange fruit is nearly identical to an orange ball of the same size. They both may look similar however when one progresses to eat the orange ball it surely tastes nothing like the orange fruit and the distinction is immediately realised. Therefore if a domain name is to be considered to be nearly identical as the Complainers[sic] seem to imply, surely the clarity of what reveals itself to any enquirer immediately on arrival at the MORTGAGE FINDER web site is that there is most certainly NO similarity between MORTGAGE FINDER and CITIMORTGAGE."

The Respondent’s assertions with regard to its rights or legitimate interests in the Domain Name are as follows:

5.10 The Domain name <CITIMORAGAGE.com>[sic] is NOT an advertised domain name nor is it shown anywhere to be a traded domain name. … we can own something which is readily available for sale since the Domain name system allows one to purchase and own such an item. … It is helpful to our response that the Complainants confirm that there is NO evidence to show that MORTGAGE FINDER has ever used the name CITIMORTGAGE or CITIMORGAGE on its web site.

With regard to the allegation of registering and using the Domain Name in bad faith, the Respondent says:

5.11 There is NO regulation which dictates that a domain name corresponds to a site of the same name, therefore contrary to what the Complainants appear to wish to imply in their submission. They would appear to prefer to be drafting their own legislation in this respect.If that had ever been the case then enquirers to <www.whitehouse.com> and <www.dailysport.com> will be in for a nasty shock ~ BE WARNED!!!!

5.12 Respondent says further in this area "MORTGAGE FINDER does NOT offer similar mortgage services to CITIMORTGAGE since as has been admitted by the Complainant’s already, MORTGAGE FINDER is clearly an ‘Independent specialist mortgage marketing company’. However it must be noted and emphasised that CITIMORTGAGE is certainly NOT in any way Independent and is therefore in NO way similar to that of MORTGAGE FINDER as alleged confusingly by the Complainant."

5.13 The Respondent refers to an article in The Legal Intelligenser of August 31, 2001 which refers to a U.S. Court decision, now reported (Strick Corp. v. Strickland, 162 F.Supp. 2d 372, 60 USPQ 2d 1889 (E.D.Penn.) decided by Kauffman J. which is said to have held

‘nothing in Trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided trademark holders’ … To hold otherwise, Judge Kaufman said ‘would create an immediate and indefinite monopoly to all famous marks holders on the Internet, by which they could lay claim to all domain names which are arguably ‘the same or similar’ as their mark. The court may not create such property rights-in-gross as a matter of dilution law’

5.14 It is also mentioned that the US Federal Court Judge ruled that:

‘Any confusion that may have when reaching a Web page rather than that of another being sought is not legally cognizable’

5.15 The Panel has not received any other requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative Proceeding that each of the three elements of paragraph 4(a) are present:

6.1 This Panel accepts Complainant’s assertion that Respondent registered an obvious and common misspelling of Complainant’s <citimortgage.com> Domain Name by omitting the silent "T" and that the Respondent’s registration of the <citimorgage.com> Domain Name is the phonetic equivalent of Complainant’s <citimortgage.com> web-site and CITIMORTGAGE. See The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1751; Williams-Sonoma, Inc. v. Polanski, WIPO Case No. D2001-0236; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Dunkin’ Donuts Inc. v. Random Thinkers, WIPO Case No. D2001-0104; Nordstrom, Inc. v. Zuccarini, WIPO Case No. D2001-1260; Pier 1 Imports, Inc. v. Success Work, WIPO Case No. D2001-0419; and Xerox Corp. v. Stonybrook Investments, Ltd. WIPO Case No. D2001-0380 ("Xerox.com"). Those who engage in such activities are commonly called "typosquatters".

I therefore find that the Domain Name <citimorgage.com> is confusingly similar to the mark in which Complainant has rights.

6.2 The Respondent has not denied the assertions of the Complainant made in support of proving this element. The Respondent has not asserted any material rights or legitimate interests in respect of the Domain Name in question, and makes no attempt to deny the factual assertions that Respondent has never been commonly known by <citimorgage.com>, or that it has used the name "citimortgage" or "citimorgage" to designate products or services it provides prior to having notice of this dispute. Indeed, the Respondent states that "it is helpful to our Response that the Complainants confirm that there is NO evidence to show that MORTGAGE FINDER has ever used the name CITIMORTGAGE or CITIMORGAGE on its web-site". Under the circumstances, this Panel finds that on a preponderance of evidence before it the Respondent has no rights or legitimate interests in respect of the Domain Name <citimorgage.com>.

6.3 This Panel agrees with the Complainant that the Respondent has registered and is using the Domain Name in bad faith in order to capitalize on the CITI name and to link customers who misspell "CITIMORTGAGE" as "CITIMORGAGE" to Respondent’s own MORTGAGE FINDER site which offers similar mortgage services as supplied by the Complainant through its CITI Family of Marks. The Respondent provided a list of company names with the prefix "CITI" with a note that says "Does Citigroup believe that ALL these companies and more infringe their CITI mark, I wonder???". The answering of this question is not within the jurisdiction of this Panel which must only deal with Domain Names before it, none of which are identified in the list supplied by the Respondent. It is also noted that many of the names have the word "dissolved" written opposite them and that none of the names contains an identifying component as close to the products offered by the Complainant as financial services advertised on the web-site for <CITIMORGAGE.COM>. In the case Microsoft Corp. v. MindKind, WIPO Case No. D2001-0193, the Panel found bad faith on essentially the same facts as here. Indeed, by substituting CITI and/or CITIMORTGAGE for Microsoft, the following statement made by that Panel would apply here:

The Panelist finds that the Respondent had actual knowledge of the Complainant’s mark MICROSOFT and its rights therein at the time the Respondent registered the domain name in issue. This finding is based on: (i) the Complainant’s mark having a strong reputation and being widely known; (ii) the domain name comprising the Complainant’s mark and the word "health"[substitute "morgage"] which is descriptive of services of one of the Complainant’s many registrations for the mark MICROSOFT; (iii) the Complainant having a Web site directed to health-related [mortgage-related] information, services and products; and (iv) the above finding of the Respondent having no rights or legitimate interests in the domain name.

The practice of registering and using slight misspellings of the Complainant’s trademarks and deriving economic benefit therefrom, either by attracting users to Respondent’s web-site where goods and services are offered, or whereby the receipt of compensation from the owners of other web-sites for delivering users to these sites, has been held by numerous Panels to constitute bad faith registration and use as defined by para.4(b)(iv) of the Policy. See Yahoo! Inc. v. Data Art Corp., WIPO Case No. D2000-0587; Disney Enterprises, Inc. v.John Zuccarini, d/b/a Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489.

This Panel has read the opinion of District Judge Kauffman in Strick Corporation v. James B. Strickland, Jr. as mentioned in the article provided by the Respondent. It is distinguishable from the case before me as the cause of action there was unfair competition, based on "dilution" and "blurring" and not on the elements to which Administrative Panels under the UDRP must limit themselves.

For the above reasons, this Panel finds that the Domain Name <citimorgage.com> has been registered and is being used in bad faith.

7.1 In accordance with the Policy and the Rules, this Administrative Panel appointed in this Administrative Proceeding issues a decision that the contested Domain Name <citimorgage.com> be transferred to the Complainant.