UDRP has been denied.
Sometimes, even giant corporations fail, and Citigroup Inc., a monolith of a financial bank, just lost the UDRP it filed for the domain Citifymarketplace.com.
Citigroup has been defending its CITI mark very aggressively, and this UDRP targets a domain that promotes a “CITIFY” brand:
“CITIFY is simple and practical to buy and sell anything found in the city. It is simple to start a businesses or to extend the reach of your current business. Sell your products without any risk, we only collect a 5% commission after a sale. It is ALWAYS FREE to open a shop.”
The business actively operates on the blockchain model, and the sole panelist examining the case pointed out just that:
Contrary to the position of Complainant, the Respondent has shown that he is providing a bona fide offering of goods or services under Policy ¶ 4(c)(i). A review of Respondent’s resolving “marketplace” website shows that Respondent offers products and services completely distinct from those offered by Complainant. Internet users who access Respondent’s website are able to shop for products that include antiques, cell phones, electronics, jewelry, and clothing, just to name a few examples.
The decision was thus made in favor of the Respondent, that gets to keep the domain Citifymarketplace.com.
Full details on this decision follow:
Citigroup Inc. v. LYON LESHLEY
Claim Number: FA1805001788603
PARTIES
Complainant is Citigroup Inc. (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is LYON LESHLEY (“Respondent”), Quebec, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citifymarketplace.com>, registered with eNom, LLC.
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.
Bruce E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on May 24, 2018; the Forum received payment on May 24, 2018.
On May 25, 2018, eNom, LLC confirmed by e-mail to the Forum that the <citifymarketplace.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 May 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2018 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@citifymarketplace.com. Also on May 29, 2018, 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 Response was received and determined to be complete on June 12, 2018. The Complainant submitted an Additional Submission on June 18, 2018.
On June 18, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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
1. Complainant is a multinational banking and financial services corporation with headquarters in New York, and was first founded as “City Bank of New York” in 1812. Complainant uses the CITI mark in connection with banking, financial, investment, and related services. Complainant has rights in the CITI mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,181,467, registered Dec. 8, 1981).
2. Respondent’s <citifymarketplace.com>[1] domain name is confusingly similar to Complainant’s mark as it fully incorporates the CITI mark and adds the letters “fy” along with the term “marketplace” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <citifymarketplace.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
4. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to resolve to a competitive website under the name “CITICOIN.”
5. Respondent registered and uses the <citifymarketplace.com> domain name in bad faith. Respondent uses the domain name to capitalize on the goodwill of the CITI mark to offer services in direct competition with Complainant’s business. Finally, Respondent clearly had knowledge of Complainant’s CITI mark when it registered the infringing domain name given the international fame associated with the mark.
B. Respondent
1. The domain name is not confusingly similar to the CITI mark as there are enough changes to the mark, and the sound of the mark, to not create any sort of confusion.
2. Further, there are many terms in the dictionary which begin with the letters CITI, and Complainant does not hold exclusive rights to those terms.
3. Complainant and Respondent operate in different sectors, thus they do not engage in competitive enterprises. Respondent is an online marketplace for local retailers, while Complainant claims to be a world leading banking institute in the financial and banking domain.
4. Further, there is nothing on Complainant’s and Respondent’s websites that would suggest any form of connection, thus the domain name would not cause confusion in the marketplace between average consumers.
C. Complainant’s Additional Submission
1. Citify sounds confusingly similar to CITI.
2. Citify and CITI have confusingly similar meanings.
3. Respondent’s Citify Logo Misappropriates the Look and Feel of the Famous CITI + Arc Logo.
4. The parties operate in overlapping markets.
5. Respondent’s domain is confusingly similar to the CITI family of marks.
6. Respondent’s resolving website competes with Complainant’s websites.
D. Respondent’s Additional Submission
Respondent’s Additional Submission disputes the point made in
Complainant’s Additional Submission.
FINDINGS
Respondent provides a bona fide offering of goods or services under Policy ¶ 4(c)(i).
DISCUSSION
Paragraph 15(a) of 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 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.
As explained below, because Complainant has not satisfied Policy ¶ 4(a)(ii), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Contrary to the position of Complainant, the Respondent has shown that he is providing a bona fide offering of goods or services under Policy ¶ 4(c)(i). A review of Respondent’s resolving “marketplace” website shows that Respondent offers products and services completely distinct from those offered by Complainant. Internet users who access Respondent’s website are able to shop for products that include antiques, cell phones, electronics, jewelry, and clothing, just to name a few examples. Respondent describes the services it offers to shoppers this way:
Citify Shopping Channel is a place for you to find new products within your city or in cities around the world. A place for small shops, craftsmen, wholesalers to show off their business, products, and services to you. You can browse through their videos and if anything catches your eye you can buy it through the Citify android app on your cell phone, tablet or computer. The channel offers an occasion for you to see the merchants behind the online marketplace and to see them in action and communicate with them in real time through the app.
Complainant is correct that Respondent uses a cryptocurrency, Citifycoin, for use in making purchases in the Citify Marketplace. Taking the resolving website as a whole, however, this reference to a cryptocurrency, the use of which is limited to Respondent’s business, cannot reasonably be found to compete with Complainant. Because Respondent’s activities are sufficiently unrelated to those of Complainant, and because those activities amount to a legitimate offering of on-line marketing services and goods, Respondent has satisfied the requirements of Policy ¶ 4(c)(i).
For example, in VIP ME ENTERPRISES LLC LIMITED LIABILITY COMPANY NEVADA v. frank ma / Vipshop (US) Inc., FA 1702016 (Forum Dec. 20, 2016), the complainant’s resolving website advertised third-party goods and services. The respondent’s activities were limited to on-line retail services featuring women’s fashion apparel. The panel in that case found that the respondent’s business was unrelated to the complainant’s use of its mark and that “on balance, there is no reliable evidence to show that Respondent’s use of the Domain Name is related to or draws on Complainant’s reputation or on Complainant’s Mark.”
Accordingly, the Panel concludes Respondent has shown that he provides bona fide goods or services within the meaning of Policy ¶ 4(c)(i).
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <citifymarketplace.com> domain name REMAIN WITH Respondent.
Bruce E. Meyerson, Panelist
Dated: June 29, 2018
