WIPO panel split over Citigroup Case

In Citigroup Inc v Parvin, a three-member World Intellectual Property Organization (WIPO) panel has issued an interesting split decision against Citigroup, granting the transfer of 'CitiFinance.com' and the cancellation of 'CitiTravel.biz', but rejecting its complaint against 'CitiTravel.com', '.info', '.net' and '.org'.

Citigroup is the owner of many trademarks that begin with the prefix 'Citi'. Shortly after a 1998 announcement that Citigroup's subsidiary Citicorp would be combining with Travelers Group Inc, Joseph Parvin registered the domain names 'CitiFinance.com' and 'CitiTravel.com'. He subsequently registered 'CitiTravel.net', 'CitiTravel.org', 'CitiTravel.biz' and 'CitiTravel.info'. The 'CitiFinance.com' website initially contained links to financial websites and an offer to sell the domain name. The 'CitiTravel.com' site contained travel advertisements and a link to another Parvin domain sale site, as well as being automatically accessed when Parvin's other 'CitiTravel' addresses were accessed.

Citigroup sent cease and desist letters to Parvin that were ignored. Parvin subsequently deactivated the 'CitiFinance.com' website. In October 2002, Citigroup filed a complaint with WIPO requesting the transfer of all of Parvin's domain names beginning with 'Citi'.

In determining that 'CitiFinance.com' should be transferred, the panel held that Citigroup is the beneficial owner of the trademark CITI for financial services, that it is well known for financial services and that the "prefix 'Citi' in connection with financial and banking will undoubtedly be associated with [the] complainant". The panel also found that 'CitiFinance.com' includes the CITI mark in its entirety, that Parvin's domain was inactive and that he had tried to sell the domain, thus engaging in a pattern of conduct indicating bad faith.

In deciding not to transfer the 'CitiTravel' domain names, the panel noted that although Citigroup has asserted use of the mark CITITRAVEL since 1986, it produced no evidence of its ownership of the mark. The panel also noted that Citigroup, although producing evidence of ownership of other 'Citi' prefix marks in travel-related fields, did not sufficiently prove its reputation so as to be able to stop others from using 'Citi' in connection with travel. The panel also noted that Citigroup's claimed first use of 'Citi' prefix marks in connection with travel services was after Parvin had registered 'CitiTravel.com', thus precluding a finding of bad faith. The panel further emphasized that of 120 US Patent and Trademark Office records containing the prefix 'Citi', the majority were registered to parties other than Citigroup.

However, despite not requiring the transfer of the 'CitiTravel' domain names under the Uniform Domain Name Dispute Resolution Policy, the panel ordered 'CitiTravel.biz' to be cancelled because Parvin's activities fell within the broader range of conduct that can constitute bad-faith registration and use under the Restrictions Dispute Resolution Policy (RDRP). This domain name was used "merely as a referral to other businesses" and was "not being used primarily for bona fide business or commercial purpose" as required by the RDRP.

Lara A Holzman, Coudert Brothers LLP, New York (with the assistance of Melissa B Apfelbaum, summer associate)