Citigroup Inc. v. citycard.com
1:12-cv-01389
E.D. Va.Jun 21, 2013Background
- Citigroup filed an in rem action under the ACPA against domain name citycard.com seeking transfer of the domain to Citigroup’s registrar CSC and eventual ownership by Citigroup.
- Verisign administers the .com registry; the domain is currently registered to Yongki Yu in South Korea and registered through Hangang Systems, Inc. (d/b/a doregi.com).
- Citigroup published notice of the action as required by the ACPA and served notice by email and postal mail to the registrant; no responsive pleading was filed and default was entered on April 3, 2013.
- Citigroup asserted its CITI marks are famous and that citycard.com is confusingly similar to those marks, constituting infringement under 15 U.S.C. § 1125(d).
- The magistrate recommended that the court grant default judgment and order Verisign to transfer registry record to CSC and CSC to register citycard.com in Citigroup’s name, giving Citigroup ownership and control.
- The opinion discusses jurisdiction, service, and the evidentiary basis for liability, concluding Citigroup has proven in rem jurisdiction and a violation of the ACPA entitling transfer relief.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the court has in rem jurisdiction over the domain name | Citigroup satisfied 15 U.S.C. § 1125(d)(2)(A)(i)-(ii) and due notice. | Yu resides outside the United States; nonappearance suggests lack of in rem basis. | Yes; court has in rem jurisdiction and proper venue. |
| Whether Citigroup states a claim under the ACPA for transfer | Citycard.com infringes CITI marks; bad-faith registration and use. | No valid rights in the CITI marks by registrant; no confusion implied by domain. | Yes; Citigroup states a claim for bad-faith domain registration/use. |
| Whether a default judgment is warranted | No responsive pleading; default admitted facts show liability. | No responsive pleading to contest liability. | Default judgment warranted to grant relief under the ACPA. |
| What relief should the court award | Transfer of citycard.com to CSC and registration in Citigroup’s name. | Transfer of registrar and registration to Citigroup; domain ownership and control to Citigroup. |
Key Cases Cited
- People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) (establishes framework for likelihood of confusion and in rem domain actions under ACPA)
- Atlas Copco AB v. Atlascopcoiran.com, 533 F. Supp. 2d 610 (E.D. Va. 2008) (confirms that social or geographic add-ons do not necessarily distinguish a domain from a mark)
- Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922 (4th Cir. 1995) (illustrates likelihood of confusion standard for marks in internet domain context)
- Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002) (remedies under § 1125(d)(2) include transfer or cancellation of domain name)
- GlobalSantaFe Corp. v. Globalsantafe.com, 250 F. Supp. 2d 610 (E.D. Va. 2003) (discusses default and admissions on a motion for default judgment)