Citigroup Inc. or Citi is an American multinational investment bank and financial services company based in New York City. The company was formed in 1998 and in 2023 had revenue in excess of $78 billion dollars.
They filed a UDRP to get the domain name Citigroup.ai for obvious reasons: The domain infringes on their famous mark; the domain’s registrant and Respondent in this case had a tall tale to tell:
“Respondent contends that he registered the disputed domain name with the legitimate intent to develop a platform to help people form friend groups in cities. He also contends that the choice of “citi” instead of “city” was his personal creative decision to create a distinctive and memorable name in today’s digital landscape. He claims that this decision was entirely unrelated to Complainant or its trademarks.”
Naturally, none of this nonsense went well with the Forum’s sole panelist.
The Respondent’s preparations to use the Domain Name to create a platform to help people form friend groups in cities has not been demonstrated by any credible evidence. Therefore, the Panel is persuaded that the afore-mentioned use of the disputed domain name cannot be considered good faith use.
Despite the Respondent’s delayed efforts to hand the domain over for $715 dollars, or for “reg fee”, or even “for free” the decision was clear: Transfer of the domain Citigroup.com to the Complainant through the UDRP process.
Copyright © 2025 DomainGang.com · All Rights Reserved.Citigroup Inc. v. Shawn Arsenault / tempntime
Claim Number: FA2411002125670
PARTIES
Complainant is Citigroup Inc. (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Shawn Arsenault / tempntime (“Respondent”), New Hampshire, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is citigroup.ai, registered with Godaddy.Com, Llc.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge have no known conflict in serving as Panelist in this proceeding.
Ivett Paulovics as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 18, 2024; Forum received payment on November 18, 2024.
On November 19, 2024, Godaddy.Com, Llc confirmed by e-mail to Forum that the citigroup.ai domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, 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 November 25, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@citigroup.ai. Also, on November 25, 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 Response was received and determined to be complete on November 29, 2024.
On December 2, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Ivett Paulovics 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.
Respondent requests the Panel to dismiss the Complaint and to facilitate an amicable resolution between the parties.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the disputed domain name is nearly identical and confusingly similar to its renown and prior trademarks, since it fully incorporates the CITI Trademarks and the CITIGROUP Trademark, merely differentiated by the addition of the “.ai” suffix.
Complainant also contends that Respondent lacks rights or legitimate interests in the disputed domain name, since Respondent is neither affiliated with, nor has been licensed or permitted to use Complainant’s trademarks or any domain name incorporating such marks. Additionally, Respondent is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, it is used to resolve to a parked page offering the disputed domain name for sale. In addition, Respondent has made no demonstrable preparations to make a bona fide use of the disputed domain name.
Finally, given the reputation of the Complainant and its trademarks, Complainant contends that Respondent had constructive and/or actual knowledge of Complainant’s well-known rights in its marks when it registered the disputed domain name. According to Complainant, Respondent has also engaged in opportunistic bad faith registration, since he registered the disputed domain name which is nearly identical and confusingly similar to Complainant’s trademarks. Finally, Respondent’s bad faith is also demonstrated by the fact that the disputed domain name is offered for sale.
B. Respondent
Respondent contends that he registered the disputed domain name with the legitimate intent to develop a platform to help people form friend groups in cities. He also contends that the choice of “citi” instead of “city” was his personal creative decision to create a distinctive and memorable name in today’s digital landscape. He claims that this decision was entirely unrelated to Complainant or its trademarks.
Respondent confirms his willingness to transfer the disputed domain name to Complainant for USD 715 (or, if a mutually agreed value cannot be reached, for the reimbursement of his costs of the registration, or for free).
FINDINGS
Complainant is Citigroup Inc., a well-known American multinational banking and financial services corporation with headquarters in New York, New York. It was founded as City Bank of New York in 1812. It is currently the 8th largest financial holding company in the world as measured by assets, and the 20th largest as measured by market capitalization.
Complainant is owner of a worldwide portfolio of trademark registrations, including:
– CITI U.S. Reg. No. 1181467, registered since December 8, 1981 in class 36;
– CITI U.S. Reg. No. 2424088, registered since January 23, 2001 in classes 35, 36;
– CITI U.S. Reg. No. 3086206, registered since April 25, 2006 in classes 35, 36;
– CITIGROUP U.S. Reg. No. 2406753, registered since November 21, 2000 in class 36.
It is also owner of the citi.com domain name, registered since December 29, 1998, and the citigroup.com domain name, registered since April 6, 1998, both resolving to its main websites.
Complainant has spent substantial time, effort, and money promoting the its marks in the U.S. and worldwide and, as a result, its marks have enjoyed widespread international recognition.
The Domain Name was registered with privacy service on July 12, 2023. It resolves to a parked page offering the Domain Name for sale.
Upon filing of the Complaint, Respondent was identified by the Registrar as Shawn Arsenault / tempntime.
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.
The onus of meeting the above threshold is incumbent on Complainant, and the evidentiary standard in UDRP disputes is the “balance of probabilities”, meaning that a Party should demonstrate to the Panel’s satisfaction that it is more likely than not that a claimed fact is true.
In accordance with Paragraph 15(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence presented.
Identical and/or Confusingly Similar
The first UDRP element functions primarily as a standing requirement.
Where a complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the standing requirement of having trademark rights for purposes to initiate a UDRP dispute. Once the complainant has established to have right in a trademark or service mark, the panel turns to the assessment of identity or confusing similarity of the disputed domain name to the trademark or service mark in which the complainant has rights.
In UDRP disputes, the test for identity or confusing similarity requires a straightforward comparison between the complainant’s trademark and the disputed domain name. This usually involves a side-by-side assessment of the domain name and the textual elements of the relevant trademark to determine whether the mark is recognizable within the domain name. When a domain name fully incorporates a trademark, or contains its dominant feature, it is generally deemed confusingly similar to the mark for purposes of the first element test. Adding other terms—whether descriptive, geographical, derogatory, or otherwise—does not prevent a finding of confusing similarity. See Chia Network Inc. v. Dan Mueller, FA 1961469 (Forum Oct. 6, 2021) (“The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Furthermore, the TLD is usually to be ignored for the purpose of determination of identity or confusing similarity between the domain name and the complainant’s trademark as it is a technical requirement of the registration. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“It is a well-established principle that generic top-level domains are irrelevant when conducting a Policy 4(a)(i) analysis.”).
In the present case, Complainant has established that it has rights in the CITI Trademarks (e.g., U.S. Reg. No. 1181467 since December 8, 1981; U.S. Reg. No. 2424088 since January 23, 2001; U.S. Reg. No. 3086206 since April 25, 2006) and in the CITIGROUP Trademark (e.g., U.S. Reg. No. 2406753 since November 21, 2000) for purposes of paragraph 4(a)(i) of the Policy. The registration of a mark with the USPTO is a valid showing of rights in a mark under Policy 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the Domain Name is identical to Complainant’s CITIGROUP Trademark. Additionally, the Domain Name is confusingly similar to Complainant’s CITI Trademarks because it wholly incorporates such marks or at least the distinctive part of such mark, namely “CITI”. The addition of the generic and descriptive term “group” to Complainant’s CITI Trademarks neither affects the attractive power of such reputed marks, nor is sufficient to distinguish the Domain Name from Complainant’s trademarks. The TLD “.ai” is to be disregarded for the determination of identity and/or confusing similarity being a technical requirement.
Accordingly, the Panel finds that Complainant has proven the first element of the paragraph 4(a) of the Policy.
Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Domain Name. If the Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy 4(a)(ii)); see also 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.”).
By virtue of paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests to the Domain Name:
(i) before any notice to Respondent of the dispute, Respondent’s use 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 it 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 consumers or to tarnish the trademark or service mark at issue.
Thus, if Respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the Domain Name, Complainant will have failed to discharge its onus and the Complaint will fail. If Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element.
In the present case, the Panel finds that Complainant has made out a sufficient prima facie case. The Domain Name was registered well after the registration and use in commerce of Complainant’s trademarks. The Domain Name is identical or confusingly similar to Complainant’s trademarks. Complainant denies any affiliation and/or association with, or authorization for, Respondent of any nature. There is no contractual arrangement between the Parties to that effect, nor has Complainant otherwise authorized the Respondent to make any use of Complainant’s trademarks. Respondent is not commonly known by the Domain Name. Furthermore, Complainant provides documentary evidence that the Domain Name resolves to the Registrar’s parked page offering the Domain Name for sale. These factors are sufficient to establish a prima facie case, and move the evidentiary onus under paragraph 4(a)(ii) of the Policy, to Respondent.
In his Response, Respondent claims that he has registered the Domain Name with the intent to develop a platform to help people form friend groups in cities. He also affirms that: “Its name reflects the planned purpose of facilitating “city groups,” a generic term that aligns with the platform’s vision. The “.ai” extension was chosen to signify the planned use of artificial intelligence. The choice of “citi” instead of “city” was a personal creative decision. In my mind, “citi” served as a modern, stylistic abbreviation for “cities,” aligning with the platform’s focus. Such stylized spellings are commonly used to create distinctive and memorable names in today’s digital landscape. This decision was entirely unrelated to Citigroup Inc. or its trademarks.”
To support his assertions, Respondent submitted a copy of his notes dated July 14, 2023 (two days after the registration of the Domain Name), which briefly outline the platform’s concept.
After having taken into due consideration the evidence available in this case, the Panel finds that the citigroup.ai domain name was selected by Respondent not for the purpose of good faith offering of goods and services or fair use, but instead for the purpose of targeting Complainant and the goodwill attached to Complainant’s CITI Trademarks and CITIGROUP Trademark.
The Registrar has identified Respondent as Shawn Arsenault, tempntime and there is no evidence before the Panel showing that Respondent has been commonly known by the Domain Name.
The parties are both located and operating in the U.S. The Domain Name, registered well-after the registration of Complainant’s widely known trademarks, is identical to Complaint’s CITIGROUP Trademark. Furthermore, it incorporates Complainant’s CITI Trademarks with the addition of the generic term “group”, and, therefore, the Domain Name is confusingly similar to such marks. This cannot be considered as a coincidence.
Respondent does not deny that he had constructive and actual knowledge of Complainant, its business and its well-known trademarks at the time of registration of the Domain Name.
The notes on the concept of Respondent’s platform to help people creating friend groups in cities with the help of artificial intelligence and his assertions on his choice of “citi” instead of “city” are pretextual and not credible. The Panel finds Complainant’s trademarks so distinctive as to be overwhelmingly associated by consumers, at least in the U.S., with Complainant as opposed to any other party. Internet users might immediately associate the Domain Name with Complainant and erroneously believe that the Domain Name and/or any related web services (website, email, etc.,) are operated, sponsored or endorsed by Complainant.
Apart from his notes, no other evidence generally pointing to a lack of indicia of cybersquatting intent and demonstrating preparations to use the Domain Name for bona fide offering of goods and services has been provided by Respondent. Respondent’s failure to make any demonstrable preparations to use the Domain Name in good faith indicates a lack of rights or legitimate interests. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
Moreover, the Panel finds that the redirection of the citigroup.ai domain name to a parking page offering for sale the Domain Name indicates speculative intent and does not constitute a fair use, without intent for commercial gain to misleadingly divert Internet users or to tarnish Complainant’s trademarks by Respondent.
Accordingly, the Panel is satisfied that Complainant has met the second requirement of paragraph 4(a) of the Policy, and finds that Respondent lacks rights or legitimate interests to the citigroup.ai domain name.
Registration and Use in Bad Faith
For the purposes of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to Complainant who is the owner of the trademark or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) 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 it has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
In the present case, Complainant has sufficiently demonstrated to have rights in the CITI Trademarks, registered since 1981, and the CITIGROUP Trademark, since 2000. These trademarks are renown in the U.S. and worldwide.
By the addition of the generic term “group” to Complainant’s CITI Trademarks, Respondent has registered a confusingly similar domain name to Complainant’s well-known and prior marks. Furthermore, the Domain Name is identical to Complainant’s CITIGROUP Trademark. The TLD “.ai” is to be ignored for the assessment of identity and/or confusing similarity, since it is a technical requirement.
Given the reputation acquired over the decades by Complainant and confirmed by several UDRP decisions (see, inter alia, Citigroup Inc. v. Chen Ying Quan, FA 1714851 (Forum Mar. 13, 2017) recognizing the global fame of Complainant’s marks), it is inconceivable that Respondent could have registered the domain name identical and/or confusingly similar to such marks for a mere chance without having in mind Complainant, its business and its renown CITI Trademarks and CITIGROUP Trademark and the intention to exploit such reputation by diverting traffic away from Complainant’s website or to tarnish such mark or to prevent Complainant from owning the disputed domain name. See Citigroup Inc. v. jose vicente gomar llacer/Ganidyork,SL – B98466980, FA 1652712 (Forum Jan. 25, 2016) (“[B]ecause of the global fame of Complainant’s mark, it is clear that Respondent registered the domain name [citi.land] with actual knowledge of the CITI mark.”). Respondent was unable to persuade the Panel about his choice of the Domain Name, which is to be considered intentional and not a coincidence.
Therefore, the Panel finds that, with the registration of the citigroup.ai domain name, Respondent has engaged in opportunistic bad faith and targeted Complainant and the goodwill attached to Complainant’s trademarks. See Google LLC v. CHANGKYUM KIM, FA 2009455 (Forum Oct. 5, 2022) (“[I]n view of the well-known character of Complainant’s trademark, the Panel finds that Respondent acted in opportunistic bad faith at the time of registration, since the domain name is so obviously connected with Complainant that its selection by Respondent, who has no connection with Complainant, suggests that the domain name was registered with a deliberate intent to create an impression of an association with Complainant.”).
The citigroup.ai domain name resolves to the Registrar’s parking page offering the Domain Name for sale. In his Response, Respondent has also confirmed to be available to transfer the Domain Name to Complainant for USD 715. This circumstance further confirms Respondent’s intention to register the domain name for the purpose of selling, renting, or otherwise transferring the domain name to Complainant or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. See Lions Gate Entertainment Inc. v. Stephen Thomas / Cheetah, FA 2001775 (Forum Aug. 5, 2022) (“Complainant contends that Respondent registered and uses the domain name in bad faith because Respondent has offered the domain for sale in excess of out-of-pocket costs. An offer of sale of a disputed domain name can be evidence of bad faith registration and use under Policy 4(b)(i).”); see also Citigroup Inc. v. 陈帮财, FA 1716398 (Forum Mar. 27, 2017) (“Complainant asserts Respondent has offered the domain name for sale to the general public, demonstrating bad faith under Policy ¶ 4(b)(i). General offers for sale can demonstrate bad faith under Policy ¶ 4(b)(i). Accordingly, the Panel looks to Complainant’s Exhibit I and determines that the resolving message is sufficient basis to find Respondent registered the domain name in bad faith per Policy ¶ 4(b)(i).”).
The Respondent’s preparations to use the Domain Name to create a platform to help people form friend groups in cities has not been demonstrated by any credible evidence. Therefore, the Panel is persuaded that the afore-mentioned use of the disputed domain name cannot be considered good faith use.
Accordingly, the Panel finds that the citigroup.ai domain name has been registered and is being used by Respondent in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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 citigroup.ai domain name be TRANSFERRED from Respondent to Complainant.
Ivett Paulovics, Panelist
Dated: December 16, 2024
