Internet Trademark Case Summaries
CIT Group, Inc. v. CITICORP
20 F. Supp. 2d 775 (D.N.J. 1998)
Defendant CITICORP and Travelers Group, Inc. announced plans to merge, the merged company to operate under the new mark CITIGROUP. Although CITICORP engaged in extensive business areas in which plaintiff did not, the parties did compete as to certain financial services. Plaintiff sought an injunction alleging that defendant’s use of the CITIGROUP mark would constitute infringement, dilution, and unfair competition with regard to plaintiff’s registered mark THE CIT GROUP. By agreement of the parties, the preliminary-injunction motion was consolidated with the trial on the merits. Analyzing the likelihood of confusion factors, the court found that confusion was not likely (forward or reverse) when the two marks were used outside the Internet context primarily because the commercial impression of the marks as presented to the public were sufficiently dissimilar, because of the expensive nature of the parties’ services, and because of the sophisticated nature of the parties’ customers. It also rejected plaintiff’s dilution claim, finding its mark to be not famous. When the marks were used as domain names, however, the court noted the likelihood of confusion between the defendant’s domain name “citigroup.com” and plaintiff’s domain name “citgroup.com.” Due to the technical constraints and requirements of the Internet, the marks appear in block letters without any distinguishing characteristics such as color, spacing, stylized lettering, or distinctive layout. Because defendant had not yet adopted the “citigroup.com” domain name, the court preserved plaintiff’s right to challenge such use as confusingly similar if defendant adopted that domain name.