Citigroup, Inc. v. Shui
_ F.Supp.2d __, 2009 WL 483145( E.D.Va., 2009).
FACTS
Plaintiff Citigroup provides worldwide financial services and is the registrant and owner of trademarks CITI and CITIBANK. Defendant Shui is a resident of China and was a registrant of record of the domain name CITYBANK.ORG at the time Plaintiff filed complaint. Citigroup never granted Shui permission to use the marks CITI or CITIBANK for any purpose.
PROCEDURAL HISTORY
Citigroup filed action against Shui, domain name registrant, alleging violation of Anticybersquatting Consumer Protection Act (ACPA). Shui moved for summary judgment.
HOLDING
The District Court, Claude M. Hilton, J., held that: (1) Shui used the citybank.org domain name in bad faith; (2) Shui’s use of CITYBANK.ORG did not fall within the ACPA’s safe harbor; (3) CITYBANK.ORG, as used, was identical or confusingly similar to, or dilutive of, distinctive or famous CITI and CITIBANK trademarks, and (4) a willful, deliberate, and bad faith registration and use of CITYBANK.ORG merited permanent injunction against Shui, as well as maximum statutory award of $100,000 and award of plaintiff’s attorneys’ fees.
ANALYSIS
First, the Court found that Shui did not have intellectual or property rights in his domain name. Registration of domain name was not sufficient under Anticybersquatting Consumer Protection Act (ACPA) to establish intellectual property rights in domain name. 15 U.S.C. § 1125(d)(1)(B)(i)(I)-(IX).
Furthermore, Shui’s use of citybank.org did not fall within safe harbor created by Anticybersquatting Consumer Protection Act (ACPA), because Shui did not have any reasonable grounds to believe that his use of domain name was fair or otherwise lawful. U.S.C. § 1125(d)(1)(A).
To establish a violation of the ACPA, a plaintiff must show (1) that defendant had a bad faith intent to profit from using the domain name; and (2) that the domain name at issue is identical or confusingly similar to, or dilutive of, plaintiff's distinctive or famous mark. See PETA, 263 F.3d 359 (citing 15 U.S.C. § 1125(d)(1)(A) (2006)).
The court found that Shui used citybank.org in bad faith effort to profit from CitiBank in violation of the ACPA, because Shui did not have any trademark or other intellectual property
rights in the domain name. Additionally, Shui acted in bad faith because he not engaged in prior use of citybank.org in connection with bona fide offering of any goods or services prior to registering the domain name, and use of domain name was commercial in nature. 15 U.S.C. § 1125(d)(1)(B)(i)(I)-(IX). The court concluded that the site was commercial in nature by noting that 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.â€
Citybank., as used to offer visitors online financial services, was identical or confusingly similar to, or dilutive of, distinctive or famous CITI and CITIBANK trademarks services, as used to offer visitors online financial services, supporting claim under Anticybersquatting Consumer Protection Act (ACPA) of bad faith registration. 15 U.S.C. § 1125(d)(1)(A). The CITIBANK mark and the domain name citybank.org are identical but for the replacement of an “i†with a “y,†and both Plaintiff and Defendant offer a variety of financial services. Plaintiff uses the CITIBANK mark in domain names to offer customers online financial services, and Defendant used the disputed domain name to offer visitors online financial services.
In considering the penalty, the Court found that willful, deliberate, and bad faith registration and use of the citybank.org domain name in violation of the ACPA merited permanent injunction against Shui, as well as maximum statutory award of $100,000 and award of attorneys' fees plaintiff. 15 U.S.C. §§ 1117(a), 1117(d).
_ F.Supp.2d __, 2009 WL 483145( E.D.Va., 2009).
FACTS
Plaintiff Citigroup provides worldwide financial services and is the registrant and owner of trademarks CITI and CITIBANK. Defendant Shui is a resident of China and was a registrant of record of the domain name CITYBANK.ORG at the time Plaintiff filed complaint. Citigroup never granted Shui permission to use the marks CITI or CITIBANK for any purpose.
PROCEDURAL HISTORY
Citigroup filed action against Shui, domain name registrant, alleging violation of Anticybersquatting Consumer Protection Act (ACPA). Shui moved for summary judgment.
HOLDING
The District Court, Claude M. Hilton, J., held that: (1) Shui used the citybank.org domain name in bad faith; (2) Shui’s use of CITYBANK.ORG did not fall within the ACPA’s safe harbor; (3) CITYBANK.ORG, as used, was identical or confusingly similar to, or dilutive of, distinctive or famous CITI and CITIBANK trademarks, and (4) a willful, deliberate, and bad faith registration and use of CITYBANK.ORG merited permanent injunction against Shui, as well as maximum statutory award of $100,000 and award of plaintiff’s attorneys’ fees.
ANALYSIS
First, the Court found that Shui did not have intellectual or property rights in his domain name. Registration of domain name was not sufficient under Anticybersquatting Consumer Protection Act (ACPA) to establish intellectual property rights in domain name. 15 U.S.C. § 1125(d)(1)(B)(i)(I)-(IX).
Furthermore, Shui’s use of citybank.org did not fall within safe harbor created by Anticybersquatting Consumer Protection Act (ACPA), because Shui did not have any reasonable grounds to believe that his use of domain name was fair or otherwise lawful. U.S.C. § 1125(d)(1)(A).
To establish a violation of the ACPA, a plaintiff must show (1) that defendant had a bad faith intent to profit from using the domain name; and (2) that the domain name at issue is identical or confusingly similar to, or dilutive of, plaintiff's distinctive or famous mark. See PETA, 263 F.3d 359 (citing 15 U.S.C. § 1125(d)(1)(A) (2006)).
The court found that Shui used citybank.org in bad faith effort to profit from CitiBank in violation of the ACPA, because Shui did not have any trademark or other intellectual property
rights in the domain name. Additionally, Shui acted in bad faith because he not engaged in prior use of citybank.org in connection with bona fide offering of any goods or services prior to registering the domain name, and use of domain name was commercial in nature. 15 U.S.C. § 1125(d)(1)(B)(i)(I)-(IX). The court concluded that the site was commercial in nature by noting that 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.â€
Citybank., as used to offer visitors online financial services, was identical or confusingly similar to, or dilutive of, distinctive or famous CITI and CITIBANK trademarks services, as used to offer visitors online financial services, supporting claim under Anticybersquatting Consumer Protection Act (ACPA) of bad faith registration. 15 U.S.C. § 1125(d)(1)(A). The CITIBANK mark and the domain name citybank.org are identical but for the replacement of an “i†with a “y,†and both Plaintiff and Defendant offer a variety of financial services. Plaintiff uses the CITIBANK mark in domain names to offer customers online financial services, and Defendant used the disputed domain name to offer visitors online financial services.
In considering the penalty, the Court found that willful, deliberate, and bad faith registration and use of the citybank.org domain name in violation of the ACPA merited permanent injunction against Shui, as well as maximum statutory award of $100,000 and award of attorneys' fees plaintiff. 15 U.S.C. §§ 1117(a), 1117(d).