In Citigroup, Inc. v. Shui, 2009 WL 483145 (E.D.Va. 2009), the Court considered Citigroup's Motion for Summary Judgment contending that Shui had registered and used a domain name in violation of the Anticybersquatting Consumer Protection Act ("ACPA"). Applying 15 U.S.C. 1125(d), the Court found in favor of Citigroup and granted summary judgment.
Shui registered the domain name citybank.org and sometime after October 13, 1997 began using the website to market financial services to visitors. On May 28, 2008, visitors to the site could click on links such as "Citibank Student" and "Citibank Visa." Clicking on these links did not redirect the user to any website affiliated with Citigroup, but instead redirected to either third party vendors of the services or another webpage within the citybank.org domain. Shui was compensated for each user that clicked through from citybank.org to a third party vendor. Citigroup is the registered owner of trademarks including "CITI" and "CITIBANK."
The Court stated that to "establish a violation of the ACPA, Plaintiff must show (1) 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." Citigroup at *2. The Court applied the nine non-exclusive factors found in 15 U.S.C. 1125(d)(1)(B)(i)to determine that Shui had used the citybank.org domain name in bad faith. The Court also found that Shui could not receive protection under the safe harbor provision of 15 U.S.C. 1125(d)(1)(B)(ii)because Shui had no reasonable grounds to believe his use of the domain name was fair or otherwise lawful.
The Court then applied the seven factors considered by the Fourth Circuit "when establishing the likelihood of confusion under the trademark statute: 1) the strength or distinctiveness of the mark; 2) the similarity of the two marks; 3) the similarity of the goods/services the marks identify; 4) the similarity of the facilities the two parties use in their businesses; 5) the similarity of the advertising used by the two parties; 6) the defendant's intent; 7) actual confusion.'" Citigroup at *4 (citing Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984)). The Court held that under these factors citybank.org was confusingly similar to Citigroup's marks.
The Court awarded Citigroup "(1) a permanent injunction enjoining Defendant from infringing on Plaintiff's trademarks; (2) statutory damages against Defendant in the amount of $100,000; and (3) attorneys' fees and costs." Id.at *4. The ACPA allows plaintiff to elect statutory damages of not less than $1,000 and not more than $100,000 per domain name, as the court considers just" instead of actual damages. 15 U.S.C. 1117(d). The ACPA also provides the court discretion to award reasonable attorneys' fees in exceptional cases. 15 U.S.C. 1117(a). "Courts have determined that 'exceptional cases' include cases involving willful and deliberate infringement by a defendant." Citigroup at *4.
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