Internet Trademark Case Summaries

Citigroup, Inc. v. Shui

___ F. Supp. 2d ____, 2009 WL 483145 (E.D. Va. Feb. 24, 2009)

Plaintiff Citigroup offered financial services under the federally registered CITIBANK and CITI marks, among others. Defendant Shui, a resident of China, owned several domain names containing the CITI marks, including: citifield.com, citibank-canada.com, citicardscom.com, citicorpsjobs.com, citifinancial.com, citiadvantage.com, and citybank.org. Citigroup filed a UDRP complaint against Shui in early 2008 and obtained transfer for all of Shui’s domains, except for the citybank.org domain, which Shui had owned since 1997. The UDRP panel found that the citybank.org domain consisted of common, generic terms that were not exclusively associated with Citigroup. Following that decision, Shui continued to host a website at citybank.org that listed several links incorporating Citigroup’s marks, such as “Citibank Student” and “Citibank Visa.” Each link, however, took users not to Citibank’s website but rather to the website of a third-party financial-services provider not affiliated with Citigroup. Shui received money every time users clicked on these links. Citigroup sued for cybersquatting under the ACPA and moved for summary judgment. The court granted Citigroup’s motion, finding that eight of ACPA’s nine statutory bad-faith factors favored Citigroup: Shui lacked “any trademark or other intellectual property rights in the domain name” and had not used the CITYBANK mark for the bona fide offering of any goods or services prior to its registration as a domain; the domain name “consist[ed] of the legal name of Plaintiff Citibank with the one alteration of an ‘i’ being replaced with a ‘y’”; Shui’s use of the domain was commercial; Shui intended to confuse consumers by diverting Internet traffic from Citigroup’s official website, because many of the pay-per-click ads contained “exact replicas of Plaintiff’s marks CITIBANK and CITI” and “each click-through provided Defendant with advertising revenue” but did not link to any Citigroup-affiliated websites; Shui sold of the domain to a third party for financial gain after the filing of this action; and Shui had previously registered other domains containing Citigroup’s marks. Shui argued that the UDRP decision should control here, but the court held the only purpose of the UDRP decision was to provide a basis to bring a court action to reverse an adverse UDRP decision. The court then found that Shui’s citybank.org domain name was confusingly similar to Citigroup’s distinctive and famous CITIBANK mark. The citybank.com domain name was identical to the CITIBANK mark but for “the replacement of an ‘i’ with a ‘y,’” and Shui offered online financial services at the domain similar to those offered by Citigroup. Accordingly, the court found that Shui violated the ACPA. Regarding remedies, because Shui’s actions were “sufficiently willful, deliberate, and performed in bad faith,” the court granted the maximum allowable statutory award of $100,000, along with attorney’s fees.