Citigroup Inc. v. Shui et al

Filing 24

MEMORANDUM OPINION RE: Pltf's Motion for Summary Judgment and on the issue of damages. Signed by District Judge Claude M. Hilton on 02/24/09. (pmil)

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA
Alexandria Division

I

L

E

FEB 2 4 2009
CITIGROUP, INCORPORATED, Plaintiff,
V.

CLERK, U.S. DISTRICT COURT
ALEXANDRIA. VIRGINIA

Civil Action No.
SHUI,

08-0727

CHEN BAO

Defendant.

MEMORANDUM OPINION

This matter comes before the Court on Plaintiff's Motion for
Summary Judgment and on the issue of damages.

Plaintiff contends that Defendant registered and used a

domain name in violation of the Anticybersquatting Consumer

Protection Act.

15 D.S.C.A.

§1125{d)

(2006)("ACPA").

Plaintiff

seeks damages in the amount allowed by statute and in the form of
attorneys fees. Plaintiff acquired in personam jurisdiction over

Defendant through successful service of process, and Defendant
filed an answer to Plaintiff's complaint.

Plaintiff is a provider of financial services in the United
States and throughout the world, and is the registrant and owner

of the trademarks CITI and CITIBANK ("CITI marks").

Defendant is

a resident of China and was the registrant of record of the
domain name CITYBANK.ORG at the time Plaintiff filed this
complaint.

Plaintiff has exclusive rights in the CITI marks,

has spent

substantial sums advertising the marks,

and operates its internet

banking through such domain names as <citi.com>,
and <citibankonline.com>.
CITI, U.S. Reg. No.

<citibank.com>,
the mark
1981

Among other registrations,

1,181,467,

was registered on December 8,

for "financial services including consumer and commercial

lending,

credit card services,

real estate services,

investment

and advisory services and providing venture capital to others." The mark CITIBANK,
January 19, 1960

U.S.

Reg.

No.

691,815,

was registered on
and has been in

for "banking services,"

continual use since February 2,

1959.

These CITI marks have been

registered in approximately 200 countries throughout the world.
When Plaintiff filed this complaint, Defendant was the named

registrant of the domain name <citybank.org>. The domain name was registered with Rebel.com,
Registry in Reston,

and is located in the Public Interest

Virginia.

Sometime after October 13,

1997,

Defendant began using the

<citybank.org> website to offer a variety of financial services
to visitors. On May 28, 2008, visitors to this site were
including "Citibank

presented with a screen of different options, Student," "Citibank Student Credit Card,"

and "Citibank Visa."

Once a visitor clicked on an option,

the website would redirect
or to another

to either a third-party vendor of these services,

screen within the <citybank.org> domain.

Clicking on these links

with "citibank" or "citi"

in the name did not redirect the user
For each "click

to any website affiliated with Citigroup.

through"

from a Defendant's website to a third-party vendor,

Defendant would receive compensation from the vendor. Plaintiff never granted Defendant permission to use the
marks CITI or CITIBANK for any purpose.

On February 5,

2008,

Plaintiff initiated an arbitration

proceeding against Defendant pursuant to the Uniform Domain Name Dispute Resolution Policy, which is incorporated into all domainIn this proceeding before the

name registration agreements.

National Arbitration Forum

("NAF"),

Plaintiff challenged

Defendant's use of the following seven domain names:

<citifield.com>,

<citibankcanada.com>,

<citicardscom.com>, <citiadvantage.com>, At that time,

<citicorpsjobs.com>,

<citifinaneial.com>,

and the domain name at issue here <citybank.org>.

Defendant was the registrant of all the challenged domain names.
Pursuant to Rule 56(c), this Court must grant summary

judgment if the moving party demonstrates

"that there is no

genuine issue as to any material fact and that the moving party

is entitled to judgment as a matter of law."
56(c).

Fed. R.

Civ.

P.

In reviewing a motion for summary judgment,

this Court

views the facts in a light most favorable to the non-moving
party.
(1986) .

Anderson v.

Liberty Lobby,

Inc..

477 U.S.

242,

255

Once a motion for summary judgment is properly made and supported, the opposing party then has the burden of showing that

a genuine dispute as to any material fact does exist.
Elec. Indus. Co., Ltd. v. Zenith Radio Corp.. 475 U.S.

Matsushita
574, 586-

87

(1986).

The mere existence of some alleged factual dispute

between the parties will not defeat an otherwise properly
supported motion for summary judgment; the requirement is that

there be no genuine issue of material fact.
at 248. "Rule 56 (e)

Anderson.

477 U.S.

requires the nonmoving party to go beyond [his] own affidavits, or by the

the pleadings and by

'depositions,

answers to interrogatories, and admissions on

file,' designate ^specific facts showing that there is a genuine
issue for trial.'"
(1986) .

Celotex Corp. v. Catrett.

477 U.S. 317,

324

To establish a violation of the ACPA,

Plaintiff must show

(1)

that defendant had a bad faith intent to profit from using
and (2) that the domain name at issue is

the domain name;

identical or confusingly similar to, or dilutive of, plaintiff's

distinctive or famous mark.
Animals v. Doughney,
U.S.C. §

See

People for Ethical Treatment of
367 (4th Cir. 2001) (citing 15

263 F.3d 359,
(2006)).

1125(d)(1)(A)

The ACPA provides nine nonexclusive factors which support a
finding of bad faith intent:

In determining whether a person has a bad faith intent
... a court may consider factors such as, but not

property rights of the person,

limited to--(I)

the trademark or other intellectual
if any,

name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

in the domain

(III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person's bona fide
noncommercial or fair use of the mark in a site

the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact
pattern of

person's offer to transfer,

accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the
sell, or otherwise assign

information,

name registration is or is not distinctive and famous.

registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others . . .; and (IX) the extent to which the mark incorporated in the person's domain

such conduct;

or the person's prior conduct indicating a
(VIII) the person's

15 U.S.C.

§ 1125(d)(1)(B)(i)(I)-(IX)

(2006).

The statute also

establishes a safe harbor providing that "[b]ad faith

intent...shall not be found in any case in which the court determines that the person believed and had reasonable grounds to
believe that the use of the domain name was a fair use or
otherwise lawful." Id.

Plaintiff has successfully established that Defendant used the disputed domain name in bad faith. The bad faith elements

listed in the ACPA establish that Defendant used this domain name

in a bad faith effort to profit from Plaintiff's marks.

First,

Defendant does not have any trademark or other intellectual property rights in the domain name. Defendant's registration of

the domain name is not sufficient to establish these rights.
Second, the domain name consists of the legal name of Plaintiff

Citibank with the one alteration of an "i" being replaced with a
"y." Further, the domain name is not the legal name of, nor any

name that

is otherwise used to identify Defendant.

Third,

Defendant has not engaged in prior use of the disputed domain

name <citybank.org> in connection with the bona fide offering of
any goods or services prior to registering the domain name.

Fourth, nature.

Defendant's use of Notably,

the domain name was commercial

in

some of the advertisements on Defendant's site

are exact replicas of Plaintiff's marks CITIBANK and CITI such

as:

"Citibank Business Account," and "Citibank Accounts Online."

Each click through provided Defendant with advertising revenue,
even though clicking on a link with Citibank in the title does

not redirect the user to any website affiliated with Plaintiff. Fifth, Defendant clearly intended to confuse, mislead and divert

internet traffic from Plaintiff's official website to his own in

order to garner more "click through"

revenue from the misleading

"citibank"

advertisements.

Sixth,

subsequent

to

the

filing of

the complaint

in

this

case,

Defendant

sold

the

domain name" for

financial gain to a third-party in an apparent liability.
factors;

effort

to avoid

Defendant

has

also violated the
has

eighth and ninth
internet domain

namely,

Defendant

registered other

names which are

identical or similar to Plaintiff's marks,
distinctive and famous at the time

and

the CITIBANK mark was Defendant registered

the disputed domain name.

Furthermore,
that Defendant's safe

this
use of

Court
the

is unable

to make a determination
fell within the

disputed domain name Specifically,

harbor created by the ACPA.

Defendant had no

reasonable grounds fair or otherwise

to believe lawful.

that his use of

the domain name was

Plaintiff
is

has also established that the domain name at
or dilutive of,

issue

identical or confusingly similar to,

plaintiff's distinctive or famous mark.
at 367; and 15 U.S.C. § 1125(d)(1)(A)

See Doughney,

263

F.3d

(2006).

In his answer to

Plaintiff's complaint,

Defendant argues

that the arbitration

decision by the NAF ought

to govern this portion of the Court's

analysis.
to serve as

However,
the

the NAF
for

"panelist's decision is relevant only
[Plaintiff's] bringing an action under

reason

§ 1114(2)(D)(v)
Barcelona.com.
330 F.3d 617,

to reverse the
Inc. v.

.

.

.

panelist's decision."

Excelentisimo Ayuntamiento De Barcelona.
Cir. 2003).

626

(4th

The

domain name

<citybank.org>

is

confusingly similar

to

Plaintiff's appropriate.

famous mark CITIBANK and liability under Courts the in the Fourth Circuit

the ACPA is factors

consider seven the

when establishing
statute:

likelihood of

confusion under

trademark

1)

the

strength or distinctiveness of the the two marks; 3) the use

the mark;

2)

the the

similarity of

similarity of

goods/services
the
5)

the marks

identify;

4)
in 7)

the similarity of
their businesses;
the two

facilities
the

two parties

similarity of

the advertising used by

parties;

6)

the defendant's
v. Temple. 747

intent;
F.2d

actual
1527 (4th Cir.

confusion.
Pizzeria Uno Corp. 1522,

1984).
years

Plaintiff

has been using

the

CITIBANK mark
services it

for over

fifty

in affiliation with

financial

offers

worldwide.

The

CITI marks finds

are

registered in over are

200

countries, The are

and this

Court and the

that

the marks

distinctive.

CITIBANK mark identical but for

the

disputed domain name of an "i"

<citybank.org> "y,"

replacement

with a

and both

Plaintiff and Plaintiff uses

Defendant

offer a variety of

financial

services.

the CITIBANK mark financial

in domain names

to offer customers

online

services,

and Defendant used the disputed domain name financial services. As described above,
the disputed

to offer visitors
this Court finds

online

that Defendant

intended to use

domain name
Based on

in bad

faith to profit
this Court

from Plaintiff's CITI marks.
finds that the disputed domain

these

factors,

name

is

confusingly

similar

to Plaintiff's marks.

Even viewing

the

facts

in

a

light

most

favorable

to

Defendant,

Plaintiff

has established that Defendant violated the issue as to any material fact remains

ACPA and that no genuine
for trial. Plaintiff asks this from

Court

for

(1)

a permanent

injunction trademarks; of

enjoining Defendant (2)

infringing on Plaintiff's

statutory damages and (3)

against Defendant fees

in the amount

$100,000;

attorneys

and costs.
to pursue statutory damages

The ACPA allows

plaintiffs

providing judgment
actual

that is

"the plaintiff may elect, trial court,

at

any

time

before

final

rendered by the
and profits,

to recover,

instead of
in the

damages

an award of

statutory damages

amount

of

not

less as the

than $1,000 court

and not more just."

than 15

$100,000 §

per

domain name,

considers

U.S.C.

1117(d)

(2006).

Further,

under section 1117(a),
attorneys' fees

the Court has

discretion
15

to award reasonable

in exceptional

cases.

U.S.C.

§

1117(a)

(2006).

Courts cases

have

determined

that and

"exceptional

cases"

include

involving willful

deliberate
This

infringement by a defendant.
Court finds that Defendant
the

is

liable

to

Plaintiff

for

registering and using

disputed domain name

in violation of

the ACPA.

It

is

the

opinion of

this

Court

that

Plaintiff

is

entitled to a permanent Defendant's violative

injunction against

Defendant.

Further,

use has been established as

sufficiently

willful,

deliberate,

and performed in bad faith to merit the
$100,000 and an award of- attorneys'

maximum statutory award of
fees.

For the reasons

stated above,

Defendant is entitled to

summary judgment and damages.

An appropriate Order shall

issue.

/s/

Claude M. Hilton

United States District Judge

Alexandria,

Virginia

February

2~*f ,

2 009

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