South Korean court blocked transfer of domain after UDRP; Citi files suit in the United States.
Last September a National Arbitration Forum panel ruled that Citigroup should get the domain name CityCard.com. [Update: the court entered a default judgment for Citigroup and the domain has been transferred.]
But the owner of the domain name sued in South Korea court to block the transfer.
Now Citigroup has filed an in rem action against the CityCard.com domain name in U.S. court (pdf).
In its suit, Citigroup claims:
…the South Korean court did not adjudicate Plaintiff’s rights under U.S. law or the U.S. Trademark Act, namely the ACPA. As a result, the South Korean court’s rulings are not relevant to Plaintiff’s above-captioned in rem Complaint seeking injunctive relief under the ACPA.
Here’s what makes this interesting to me.
When Citigroup filed its UDRP against the owner of CityCard.com, it most likely agreed to jurisdiction in South Korea should the respondent in the case file a lawsuit over the domain name. Now the company is upset over what that court ruled because it wasn’t based on U.S. law, so it’s filing an in rem action in the U.S.
Perhaps there’s more legal nuance to this, and I welcome any attorneys to chime in.
Having “Mis”spent half my life in Civil Courts of many levels I think this will be very interesting. In normal circumstances the Courts of one Country will NOT interfere in the decisions or jurisidiction of another .It would be interesting to know if USA recognises Korean Court decisions and allows reciprocal enforcement of Judgements etc. Looking at the facts stated I guess that the undertaking does NOT apply to any Court actions since the UDRO Policy states. quote;
5. All Other Disputes and Litigation. All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available. END QUOTE
The long and short is that the undertaking given in the UDRP does not effect litigation concerning matters other than the UDRP decision ,in my opinion (which may be wrong). Will watch this because it is very relevant to everyone particularly us “foreigners” to USA.
I checked the USPTO and see that the CitiGroup have NO trade mark for “Citicard” . I also see that they claim that “City” is phonetic equivelant of “CITI” .So they want to monopolise the word “City”. I would say they are stepping far outside the realms of Trade Mark infringement and into fantasy land. The reason that there are soooo many classes of trade mark as well as jurisdictions etc ,is because there are more people in the World that want to use word “City” than CitiGroup. I hope they lose of course.
Regarding new gTLD, Citi bank agreed that .citi and .city are not similar. So why should CitiCard and CityCard be similar then?
A couple of points. There is a general misunderstanding about the UDRP Mutual Jurisdiction (MJ) concept. In short, agreeing to be admitted to suit in the MJ is not a waiver of any other competent jurisdiction. It is merely an express consent to one of many potentially competent jurisdictions.
Secondly, this has been done before. The facts here are precisely the same as those in NBC Universal, Inc. v. NBCUNIVERSAL.COM
378 F. Supp. 2d 715 (E.D. Va. 2005). In that case, a Korean registrant lost a UDRP, filed suit in Korea, and NBC filed an ACPA in rem action in the Eastern District of VA.
Jay, of course they wish to argue both black and white .They did say it was “phonetically” similar in this legal case which clearly was careful wording.
John, it may ends with lost of .citi, if similarity of “citi” and “city” will be confirmed by curt. Is it worthy for Citi to risk their own gTLD? If anything else, timing is wrong…
The history of the financial industry and trademark law with respect to domain names is a storied one. If this case is about establishing case law or obtaining this particular domain name may be unclear at this point.
Much of the case law is unsettled when it comes to domain names and in rem actions and everyone knows that anyone can file a law suite against a ham sandwich if necessary.
What appears to be settled is that when one claims that a crime is involved domain names can obtained through in rem actions.
John B,
what was the final outcome of the NBCUNIVERSAL.COM case?
@Jay
That kind of reductionist thinking is entirely beside the point. The question is not whether “city” and “citi” are, or are not confusingly similar. The question is whether an ordinary consumer would believe that “citycard” has something to do with the well-known issuer of credit cards.
Now, it may be that the phrase “city card” is associated with various types of transit passes, tourist discount passes, etc. that various cities issue; or it may not. That’s a fact question that requires evidence to answer.
Another fact question relates to how the registrant has been using it; whether there has been any actual consumer confusion; whether the registrant has or has not been using it to suggest an association with the credit card company; and so on.
But resolution of the dispute is not limited to some typographical comparison of “city” and “citi” and whether it is or is not confusing in the context of its combination with “-card” or whether it is used in the context of a proposed TLD.
What about the fact that Citi Group do not have a trade mark on “citicard” or “citi card” ?. In fact they let it expire while ago. Are they still entitled to use Lanham Act without trade mark on exact phrase ?.
Fuk city. They screwed me over $2000 and told me stuff it. Worst bank ever.
@ John Berryhill –
I know that you can sue anywhere after a UDRP, but I thought that Citi would have had to agree to the South Korea jurisdiction IF the respondent filed a case there.
So are you basically saying that the complainant can sue elsewhere to try to overrule another courts decision?
Thanks for clarifying.
Andrew, the NBC situation, of which this is a repeat, is a little odd, but there is another way to look at it.
UDRP 4(k) contemplates a suit by the respondent against the complainant, and requires the registrar not to transfer the name while that suit proceeds.
The in rem suit here is a suit by the complainant agains the domain name, based on the location of the registry, and in the jurisdiction of the registry.
So, while the South Korean suit can proceed, it becomes irrelevant to the fact that if the VA court orders Verisign to transfer the name, then the Korean registrar can’t stop that, regardless of what the Korean court says.
The relevant legislative history of the in rem provision of the ACPA indicates that Congress didn’t contemplate what happens when the registrar is not located in the US.
And, UK John, all I can suggest is that you try opening an establishment called “MacDonnell’s Hamburgers” and try explaining that McDonald’s doesn’t own a registered trademark on that term. Or, try “Coka-Cola” and see how far you get.
@Andrew – I guess a simpler way to put it is that the VA court would not be “over-ruling” the Korean court.
The Korean court can certainly decide the registration was lawful in Korea and order the Korean registrar not to transfer the domain name.
The US court can decide it is unlawful in the US and order the registry to transfer the domain name.
The two courts are not only ruling on different things, but their decisions are binding on different parties.
Thanks John.
This is quite interesting, more so for European’s, as details decisions made in European Court re Trade Marks. By the way “No LOC” means “No Likelihood of confusion” and Loc” of course means “Likelihood of confusion”.
http://oami.europa.eu/ows/rw/resource/documents/CTM/guidelines/opposition_similarity_signs_en.pdf
@John Berryhill, everything you said sounds right if the domain in question was citybankcard.com, it would clearly be taking advantage of the Citibank mark, but in this case the domain in question does not have anything to do with any bank, the domain citycard can be used in thousands of ways. Just think of how many cities there are in all English speaking nations, and you must remember that this is the world wide web, anyone in the world can use the domain. Without a doubt Citibank is taking advantage of the fact that the arbitration companies are biased toward the complainant (their client).
@Joe Par
“but in this case the domain in question does not have anything to do with any bank, the domain citycard can be used in thousands of ways.”
Hmmm…. that may be why I said:
“Now, it may be that the phrase “city card” is associated with various types of transit passes, tourist discount passes, etc. that various cities issue; or it may not. That’s a fact question that requires evidence to answer.
Another fact question relates to how the registrant has been using it; whether there has been any actual consumer confusion; whether the registrant has or has not been using it to suggest an association with the credit card company; and so on.”
Believe it or not, the entirety of a domain name dispute doesn’t boil down to some typographical formula, but requires answers to a couple of different questions.
@John Berryhill, looking at the citycard.com website I can clearly see that the registrant is giving it a good use (sell different goods). The combination of two generic words “City and Card” is a great domain name, I do understand that there may be confusion by consumers, but that is because of Citibank mistake of choosing a name similar to a generic term, by making that mistake they should not benefit in the sense of having rights to any domain name that contains ‘city or card’. In this case, why should this belong to Citibank? How about Visa, Mastercard, American Express? They deal with creditCARDS in every City in the world.
@Joe
“looking at the citycard.com website I can clearly see that the registrant is giving it a good use”
…and looking at the UDRP decision you can clearly see (after translating it from Korean) that the website was being used to advertise credit cards. What do you suppose happened, Joe?
@Joe Par
Maybe because it’s arguably close to their mark?
Wish I can read the decision, but it’s in the Korean language. That would’ve revealed how or why Citigroup won.
@John Berryhill – ah okay. I was also trying to translate it online but wasn’t having much luck. I suspected the site advertised credit cards somehow, so thanks for confirming what you just commented.
Update: Citigroup got a default judgement and the domain has been transferred to it.