The Complainant is Amegy Bank National Association of Houston, Texas, United States of America, represented by Callister Nebeker & McCullough, United States of America.
The Respondent is ICS INC. of Grand Cayman, Cayman Islands, Overseas territory of the United Kingdom of Great Britain and Northern Ireland / Contact Privacy Inc., Toronto, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2012. On February 10, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On February 10, 2012, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 17, 2012.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2012.
The Center appointed Mary Padbury as the sole panelist in this matter on April 13, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The due date for decision was extended to May 16, 2012. 4. Factual Background
The disputed domain name was registered on January 11, 2012.
Since 2003, Zions Bancorporation, the parent company of the Complainant, has been the registrant of the domain name , from which Complainant advertises and offers banking services.
The Complainant is also the owner of the following trademarks registered with the United States Patent and Trademark Office:
- AMEGY BANK, Registration No. 2,979,655 registered as of July 26, 2005 for "banking services; investment services, namely investment fund transfer and transaction services, funds investment, investment advice, investment brokerage, investment consultation, investment management, maintaining escrow accounts for investments, and securities brokerage; mortgage services, namely mortgage banking, mortgage lending, and maintaining mortgage escrow accounts";
- AMEGYBANK (Stylized), Registration No. 3,105,196 registered as of June 13, 2006 for "banking services; on-line banking; investment banking, advice, brokerage and management services; securities brokerage services; insurance agency, administration and consultation services; mortgage banking and lending services; equipment financing services".
These registered marks are in use by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Disputed Domain Name is confusingly similar to Complainant's trademarks for AMEGYBANK. The Disputed Domain Name incorporates the dominant portion of Complainant's registered marks AMEGY BANK and AMEGYBANK (Stylized) and is otherwise confusingly similar to these registered marks. The dominant portion of the Disputed Domain Name is the word “amegy”. The Disputed Domain Name includes the letters "www" at the beginning but these letters are merely descriptive of the World Wide Web.
Through the use of Complainant's marks, the Complainant contends that the Disputed Domain Name directs consumers, either directly or indirectly, to a website that references various banking terms and likely confuses consumers as to the source of the goods being offered.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has been using its AMEGYBANK mark since at least as early as 2005 and obtained federal registration for such mark on July 26, 2005. The Complainant has been using its AMEGYBANK (Stylized) mark in commerce since at least as early as 2005 and obtained registration for such mark on June 13, 2006. The Complainant believes that the Respondent acquired the registration for the Disputed Domain Name no earlier than January 2012.
The Respondent is not a licensee of Complainant's trademarks, and has not otherwise obtained authorization to use the Complainant's marks.
The Complainant contends that the Respondent is not using the Disputed Domain Name as part of a bona fide offering of goods or services. Instead, the Respondent appears to be using the Disputed Domain Name to provide various banking-related search queries that direct consumers to the websites of third parties.
The Complainant contends that use of the Complainant's marks in the Disputed Domain Name and on Respondents' website is misleading and may divert consumers to this website instead of the Complainant's website. As the Respondent's website is misleading, the Complainant considers that the Respondent may also use it in connection with various phishing and fraudulent activities.
Furthermore, the Complainant considers that the Respondent's use of the Complainant's marks may tarnish Complainant's marks.
The Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith.
The Respondent registered the Disputed Domain Name that contains the dominant portion of the mark AMEGY BANK and AMEGYBANK (Stylized) and is confusingly similar to such marks.
The Disputed Domain Name leads to a website that provides links to various banking related search queries, which identify services that are identical or similar to the type of services offered by the Complainant under its registered marks.
The Respondent has also displayed the mark AMEGY BANK in multiple locations on the website associated with the Disputed Domain Name.
While there may be insufficient information available to confirm that the website using the Disputed Domain Name is operated by a competitor, the Complainant considers that the Respondent is clearly trying to divert customers of the Complainant from the Complainant's website to the Respondent's website by using the dominant portion of Complainant's marks in the Disputed Domain Name and on the Respondent's website.
Furthermore, by using the dominant portion of the Complainant's marks in the Disputed Domain Name and on the associated website, Complainant contends that the Respondent is intentionally creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, Rules and Supplemental Rules. Complainant has the onus of proving three elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the registered trademark AMEGBANK owned by the Complainant. B. Rights or Legitimate Interests
The Panel must decide whether Respondent has any rights or legitimate interests to the disputed domain name. In doing so, regard may be had to circumstances which might demonstrate as follows:
(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the Respondent as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the contention of the Complainant that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence of use of the Disputed Domain Name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the Disputed Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
The Panel is satisfied that the domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith:
(i) circumstances indicating that the Respondent has registered the domain name primarily for the purpose for selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name;
(ii) The Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided the respondent has engaged in the pattern of such conduct;
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The Panel is satisfied that at least paragraph 4(b)(iv) of the Policy is made out in that it is more likely than not that the Respondent has registered the Disputed Domain Name to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark AMEGYBANK as to the source, sponsorship, affiliation, or endorsements of the Respondent's website or location or of any product or service of the Respondent's website or location. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Mary Padbury
Sole Panelist
Dated: May 17, 2012
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