Citigroup Inc. v. Shui et al, No. 1:2008cv00727 - Document 24 (E.D. Va. 2009)
Court Description: 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)
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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA I Alexandria Division L E FEB 2 4 2009 CITIGROUP, INCORPORATED, CLERK, U.S. DISTRICT COURT ALEXANDRIA. VIRGINIA Plaintiff, V. Civil Action No. CHEN BAO 08-0727 SHUI, 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, 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>, Among other registrations, 1,181,467, has spent the mark was registered on December 8, 1981 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, for "banking services," continual use since February 2, 1959. was registered on and has been in 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 presented with a screen of different options, Student," "Citibank Student Credit Card," Once a visitor clicked on an option, including "Citibank and "Citibank Visa." the website would redirect to either a third-party vendor of these services, screen within the <citybank.org> domain. or to another Clicking on these links with "citibank" or "citi" in the name did not redirect the user to any website affiliated with Citigroup. through" For each "click 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 domain- name registration agreements. National Arbitration Forum In this proceeding before the ("NAF"), Plaintiff challenged Defendant's use of the following seven domain names: <citifield.com>, <citibankcanada.com>, <citicorpsjobs.com>, <citicardscom.com>, <citifinaneial.com>, <citiadvantage.com>, and the domain name at issue here <citybank.org>. At that time, Defendant was the registrant of all the challenged domain names. Pursuant to Rule 56(c), this Court must grant judgment if the moving party demonstrates summary "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. In reviewing a motion for summary judgment, Civ. this Court views the facts in a light most favorable to the non-moving party. (1986) . Anderson v. Liberty Lobby, Inc.. 477 U.S. P. 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. Matsushita Elec. 574, 87 Indus. Co., (1986). Ltd. v. Zenith Radio Corp.. 475 U.S. 586- 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) 477 U.S. requires the nonmoving party to go beyond the pleadings and by 'depositions, Anderson. [his] own affidavits, or by the answers to interrogatories, and admissions on file,' designate ^specific facts showing that there is a genuine issue for trial.'" Celotex Corp. v. Catrett. 477 U.S. 317, 324 (1986) . To establish a violation of the ACPA, (1) Plaintiff must show 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. Animals v. Doughney, U.S.C. § See People for Ethical Treatment of 263 F.3d 359, 1125(d)(1)(A) 367 (4th Cir. 2001) (citing 15 (2006)). 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 limited to--(I) the trademark or other intellectual property rights of the person, if any, in the domain 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; (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 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 person's offer to transfer, sell, or otherwise assign 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 information, pattern of or the person's prior conduct indicating a such conduct; (VIII) the person's 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 name registration is or is not distinctive and famous. 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, name that the domain name is not the legal name of, is otherwise used to identify Defendant. nor any 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. the complaint in this financial gain to a liability. factors; case, names which are has registered Court the is unable § U.S.C. However, the 1114(2)(D)(v) 330 F.3d 617, at the and time Specifically, that his use of fell within the Defendant had no the domain name was has also established that the domain name at 15 Barcelona.com. internet domain lawful. § 1125(d)(1)(A) 626 v. (4th 263 F.3d In his answer to that the arbitration for "panelist's decision is relevant only [Plaintiff's] to reverse the Inc. See Doughney, to govern this portion of the Court's the NAF reason issue or dilutive of, (2006). Defendant argues decision by the NAF ought to serve as to avoid eighth and ninth disputed domain name to believe Plaintiff's complaint, analysis. effort to make a determination plaintiff's distinctive or famous mark. and filing of the disputed domain name. identical or confusingly similar to, 367; the domain name" for registered other harbor created by the ACPA. fair or otherwise at the distinctive and famous this reasonable grounds is has use of that Defendant's Plaintiff sold to identical or similar to Plaintiff's marks, Furthermore, safe Defendant also violated the Defendant the CITIBANK mark was Defendant subsequent third-party in an apparent Defendant namely, Sixth, . . . bringing an action under panelist's decision." Excelentisimo Ayuntamiento De Barcelona. Cir. 2003). The domain name Plaintiff's <citybank.org> is confusingly similar famous mark CITIBANK and liability under appropriate. Courts when establishing in the the Fourth Circuit likelihood of the ACPA is consider seven confusion under to the factors trademark statute: 1) the strength or distinctiveness of similarity of the two marks; goods/services the marks the the 5) facilities the 6) the identify; two parties similarity of parties; 3) the mark; the the 4) the similarity of in use their businesses; the advertising used by the defendant's 2) similarity of intent; 7) the two actual confusion. Pizzeria Uno Corp. 1984). years The Plaintiff marks finds the the replacement of services, Court domain name name is an "i" finds these with a (4th Cir. CITIBANK mark services 200 it "y," financial for over offers countries, <citybank.org> financial that Defendant The are and both fifty worldwide. and this CITIBANK mark identical but for Plaintiff and services. Plaintiff to offer customers this similar Court to services. uses online As described above, intended to use faith to profit factors, confusingly 1527 and Defendant used the disputed domain name online in bad 1522, distinctive. in domain names to offer visitors Based on are offer a variety of financial the registered in over the marks the CITIBANK mark F.2d financial disputed domain name Defendant 747 has been using are that and this Temple. in affiliation with CITI Court v. the disputed from Plaintiff's CITI marks. finds that the Plaintiff's marks. disputed domain Even viewing Defendant, the Plaintiff facts a light most favorable issue as to any material fact remains trial. Plaintiff asks this Court enjoining Defendant from infringing on Plaintiff's (2) to has established that Defendant violated the ACPA and that no genuine for in statutory damages $100,000; and (3) providing judgment that is of not domain name, (2006). and profits, less as the Further, § 1117(a) "exceptional deliberate This court cases" of statutory damages at any to recover, fees Courts just." than before 15 U.S.C. § the Court has determined final instead of $100,000 in exceptional have cases time statutory damages and not more considers include in the per 1117(d) discretion cases. 15 that involving willful and infringement by a defendant. Court finds registering and using the ACPA. court, under section 1117(a), (2006). trademarks; in the amount to pursue an award of attorneys' injunction and costs. trial than $1,000 to award reasonable U.S.C. a permanent "the plaintiff may elect, damages amount fees plaintiffs rendered by the actual (1) against Defendant attorneys The ACPA allows for It is the that the is liable disputed domain name opinion of entitled to a permanent Defendant's violative Defendant this Court injunction against use that to Plaintiff for in violation of Plaintiff Defendant. has been established as is Further, sufficiently willful, deliberate, and performed in bad faith to merit the maximum statutory award of $100,000 and an award of- attorneys' 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, February Virginia 2~*f , 2 009 10
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