Citigroup Inc. is very protective of its famous CITI mark; it filed a UDRP to get the domain Citi.ai from its registrant.
It appears that the Respondent fired up ChatGPT and generated a plausible acronym of CITI: Carbon Innovations & Trading Initiative.
In their response, the Respondent analyzed that alleged business project further:
“I registered citi.ai with the intention of developing an artificial intelligence platform, exploring opportunities in AI research and technological advancements. The term “CITI” was chosen as a potential acronym for “Carbon Innovations and Trading Initiative (CITI)”, emphasizing the collaborative nature of AI development and its application in environmental sustainability. My vision is to leverage AI technology to support carbon credit minting and trading initiatives, which are critical to addressing climate change. I plan to continue to do so as it is a multi-trillion dollar opportunity.”
Naturally, the Forum panelist had none of this nonsense and ordered the domain Citi.ai to be transferred to the Complainant:
“[…] given the fame and distinctive character of Complainant’s CITI mark, the Panel finds that Respondent was well aware of Complainant and its mark when registering the citi.ai domain name and did so in bad faith to take advantage of and intentionally trade on the goodwill associated with Complainant’s mark.”
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Citigroup Inc. v. Quoc Bui
Claim Number: FA2411002124740
PARTIES
Complainant is Citigroup Inc. (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Quoc Bui (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is citi.ai, registered with Zenaida.cate.ai.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 13, 2024. Forum received payment on November 13, 2024.
On November 13, 2024, Zenaida.cate.ai confirmed by e-mail to Forum that the citi.ai domain name is registered with Zenaida.cate.ai and that Respondent is the current registrant of the name. Zenaida.cate.ai has verified that Respondent is bound by the Zenaida.cate.ai registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 13, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@citi.ai. Also on November 13, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely informal Response was received on November 18, 2024.
On November 21, 2024, Complainant submitted a Reply to the Response.
On November 21, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Founded as City Bank of New York in 1812, Complainant, Citigroup, Inc., operates an American multinational bank and financial services corporation. Complainant has rights in the CITI mark through registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s citi.ai domain name is nearly identical and confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the citi.ai domain name. Respondent is not commonly known by the domain name, or the CITI mark, or any variation of that mark, and is not a licensee or authorized user of that mark or any variation thereof. Respondent is using false or incomplete contact information to mask his identity and location, i.e., he has only listed the famous Rodeo Drive in Beverly Hills California as his address, without a house or apartment number. Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain name is being offered for sale and being used with a commercial pay-per-click website.
The citi.ai domain name was registered and is used in bad faith. The CITI mark has enjoyed international fame and notoriety due to Complainant’s exclusive, worldwide use and promotion of its services under the CITI mark for decades. As a result, it is inconceivable that Respondent had no knowledge of Complainant’s rights in the CITI mark prior to registering the domain name, and its registration is clearly in bad faith. Respondent is using the domain name in connection with a pay-per-click commercial website to generate revenue for Respondent, and Respondent is offering to sell the domain name. This demonstrates that Respondent registered and is using the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, which is evidence of bad faith use under Policy ¶ 4(b)(i).
B. Respondent’s informal Response (in full)
“I am submitting this response to the UDRP complaint filed by Citigroup Inc. regarding my ownership of the domain citi.ai. I would like to address the claims made in the complaint, clarify my intentions, and demonstrate that I have acted in good faith and with no intention of causing harm to the complainant or its brand.
Legitimate Interest and Intended Use
I registered citi.ai with the intention of developing an artificial intelligence platform, exploring opportunities in AI research and technological advancements. The term “CITI” was chosen as a potential acronym for “Carbon Innovations and Trading Initiative (CITI)”, emphasizing the collaborative nature of AI development and its application in environmental sustainability. My vision is to leverage AI technology to support carbon credit minting and trading initiatives, which are critical to addressing climate change. I plan to continue to do so as it is a multi-trillion dollar opportunity.
• Documented Evidence: I am prepared to provide evidence of preparatory work for this project, including research notes, business concepts, and plans that demonstrate a legitimate interest in using the domain for these purposes. Prior to submitting evidence, I will require strict NDA from all parties involved.
• Domain Management: The domain has been passively held without any attempt to confuse, mislead, or profit from Citibank’s brand. Any listing of citi.ai on Sedo was part of standard domain management practices, intended to explore potential partnerships or opportunities while I developed my project plans.
Good Faith Efforts and Absence of Malicious Intent
1. No Harmful Use: The domain has never been used to mislead, confuse, or infringe upon Citibank’s trademark. It has remained inactive, and I have ensured that it does not create any association with Citibank or its services.
2. No Proactive Sale Attempts: I have not sought to sell the domain to Citibank or any competitor. However, I did receive an unsolicited inquiry from CSC Global, which I believe may be linked to Citibank. In response to this inquiry, I offered a sale price of $100,000 USD, specifying that the transaction would be conducted through Sedo, with the buyer covering all broker fees. This response was in good faith and only after being approached.
3. Potential Coordination: Given the timing of CSC Global’s inquiry and the subsequent UDRP complaint, I suspect there may be a connection. If this is indeed the case, I am open to working with CSC Global to facilitate a domain transfer under these fair and reasonable terms.
Willingness to Cooperate
I am committed to finding a constructive resolution that addresses Citibank’s concerns while acknowledging my legitimate interest in the domain and the resources I have invested. While I have not sought to profit unfairly, I would welcome an amicable agreement that fairly compensates me for my investment and efforts.
Respectful Request
I kindly request that all communications remain professional and constructive. I am open to engaging in good faith discussions with Citibank and/or its representatives, such as CSC Global, to resolve this matter positively.
Thank you for considering my response. I trust that the panel will review the case impartially, taking into account the evidence of my legitimate interest and my good faith actions.”
C. Additional Submission – Complainant
Respondent submitted no evidence to support his specious claim that he intends to use CITI as an acronym for “Carbon Innovations and Trading Initiative” with an artificial intelligence platform relating to environmental sustainability nor to demonstrate Respondent’s familiarity with carbon trading initiatives.
Respondent alleges that he has acted in good faith, yet he admits to having offered to sell the domain name to CSC Global for $100,000 and then reiterates his offer to sell the domain name as part of his response to the UDRP complaint. Respondent’s multiple offers to sell a domain name incorporating the famous CITI trademark is an obvious demonstration of bad faith and inconsistent with Respondent’s alleged good faith intentions.
FINDINGS
Complainant has established all the elements entitling it to relief.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a 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.”
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 shown that it has rights in the CITI mark through numerous registrations with the USPTO (e.g., Reg. No. 1,181,467 registered on December 8, 1981).
Ignoring the inconsequential gTLD “.ai”, the Panel finds Respondent’s citi.ai domain name to be identical to Complainant’s mark.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel notes that the registration date of the domain name is presently unavailable but that there have been numerous records archived since March 22, 2017 (Complaint Exhibit I), by which time Complainant’s CITI mark had been recognized as famous. See Citigroup Inc. v. jose vicente gomar llacer / Gandiyork, SL – B98466980 Forum FA1512001652712 (January 25, 2016).
Complainant has shown that, as at November 12, 2024, the domain name resolved to a website with pay-per-click links unrelated to Complainant’s business.
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Respondent’s informal Response does not deny that Respondent was aware of Complainant’s CITI mark when registering the domain name.
Respondent claims the term “CITI” was chosen as a potential acronym for “Carbon Innovations and Trading Initiative (CITI)” and states that he is prepared to provide evidence of preparatory work for this project if non-disclosure agreements are provided by all parties involved.
The Panel notes that Paragraph 5(c) of the Rules provides:
“The response, including any annexes, shall be submitted in electronic form and shall:
(viii) Conclude with the following statement followed by the signature (in any electronic format) of the Respondent or its authorized representative:
“Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument”; and
(ix) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents.”
No such certification and no such evidence have been provided. The Panel considers that it would be contrary to Paragraph 15(a) of the Rules to receive evidence subject to a non-disclosure agreement, especially since Section 4(j) of the Policy provides:
“All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.”
The Panel does not consider the circumstances of this case to be exceptional and, given the fame of Complainant’s CITI mark and the absence of any evidence to support Respondent’s assertions, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Despite the high price sought by Respondent when approached by CSC Global, the Panel is not persuaded that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant, nor that the circumstances set out in paragraphs 4(b)(ii) or (iii) apply.
However, given the fame and distinctive character of Complainant’s CITI mark, the Panel finds that Respondent was well aware of Complainant and its mark when registering the citi.ai domain name and did so in bad faith to take advantage of and intentionally trade on the goodwill associated with Complainant’s mark. Further, Respondent is using the domain name in bad faith in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Accordingly, the Panel finds Respondent registered and is using the domain name in bad faith.
Complainant has established this element.
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 citi.ai domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: November 22, 2024
