Complainant is Amegy Bank National Association of Houston, Texas, United States of America (“United States”), represented by Callister Nebeker & McCullough, United States.
Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / 21562719 Ont Ltd of Brampton, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2012. On June 1, 2012, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On June 4, 2012, F 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 June 4, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 7, 2012.
The Center verified that the Complaint and 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 Respondent of the Complaint, and the proceedings commenced on June 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 29, 2012.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on July 3, 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. 4. Factual Background
Complainant is the owner two trademarks registered with the United States Patent and Trademark Office: AMEGY BANK, Registration No. 2,979,655, registered July 26, 2005, and AMEGYBANK (stylized) Registration No. 3,105,196, registered June 13, 2006. The registered marks are used by Complainant 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” and “banking services; securities brokerage services; insurance agency, administration and consultation services; mortgage banking and lending services; equipment financing services,” respectively.
Since 2003, Zions Bancorporation, the parent company of Complainant, has been the registrant of the domain name from which Complainant advertises and offers their banking services.
According to the publicly available WhoIs database, the Domain Name was registered on May 4, 2007. 5. Parties’ Contentions A. Complainant
Complainant contends the Domain Name is confusingly similar to Complainant’s trademarks because it incorporates Complainant’s registered marks AMEGY BANK and AMEGYBANK, the inclusion of the letters “www” at the beginning being merely descriptive of the World Wide Web.
Complainant further contends Respondents have no rights or legitimate interests in the Domain Name because (1) the federal registration and use of Complainant’s marks is prior to the registration of the Domain Name on May 2007, (2) Respondents are not licensees of Complainant’s trademarks and have not otherwise obtained authorization to use Complainant’s marks, (3) Respondents are not using the Domain Name as part of a bona fide offering of goods or services, they rather appear to be using the Domain Name to provide various banking-related search queries that direct customers to the web sites of competitors, (4) the use of Complainant’s marks in the Domain Name and on Respondents’ website is misleading and may divert customers to this website instead of Complainant’s official and authorized website and (5) because Respondents’ website is misleading, Respondents may also use it in connection with various phishing and fraudulent activities.
Last, Complainant contends Respondents registered and are using the Domain Name in bad faith because (1) they registered the Domain Name incorporating the Complainant’s registered marks, (2) the website provides links to various banking related search queries, which identify services that are identical or similar to the type of services offered by Complainant under their trademarks, (3) Respondents have displayed the mark AMEGY BANK on the website associated with the Domain Name, (4) Respondents are clearly trying to divert customers of Complainant from Complainant’s website to respondent's website by using the dominant portion of Complainant’s marks in the Domain Name, (5) Respondents have added the letters “www” to the beginning of the Domain Name but these letters are merely descriptive of the World Wide Web and (6) by using the dominant portion of Complainant’s marks in the Domain Name, Respondents are intentionally creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.
For these reasons, Complainant requests the Administrative panel to transfer the Domain Name to Complainant in accordance with Paragraph 4(i) of the Policy. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that: a respondent has registered a domain name which is identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements. A. Identical or Confusingly Similar
The Complainant has rights in AMEGY BANK and AMEGYBANK marks.
Under the UDRP, the test for confusing similarity involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trade mark and the domain name.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other terms in the domain name may not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark (LEGO Juris A/S v. Richard Larkins Sets&Reps,WIPO Case No. D2012-1024).
In this case, the Domain Name incorporates the Complainant’s marks AMEGY BANK and AMEGYBANK in their entirety and is clearly its dominant element.
Given the distinctive nature of the AMEGY BANK and AMEGYBANK marks which are readily recognisable within the Domain Name, the Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s trademarks, and thus this element of paragraph 4(a) of the Policy has been established.
Accordingly, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing rights or legitimate interests apply, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a) (Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; LEGO Juris A/S v. Richard Larkins Sets&Reps,WIPO Case No. D2012-1024).
The Complainant has established a prima facie case that the Respondents lack rights and legitimate interests in respect of the Domain Name and there has been no rebuttal by the Respondents. Nothing in the submitted materials gives this Panel reason to believe that the Respondents have rights or legitimate interests in respect of the Domain Name.
Accordingly, Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another” (M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
In this case the Panel holds that it is highly unlikely that Respondents would have registered randomly and unintentionally the Domain Name, which is confusingly similar to the Complainant’s trademarks and would use such Domain Name to direct to websites offering the same or similar services as those offered by Complainant. It appears to this Panel more likely that such registration and use is motivated by commercial gain.
The Panel therefore considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the Domain Name within the meaning of paragraph 4(b)(iv) and of the Policy.
Accordingly, Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Given that Complainant has proved all three elements of Paragraph 4(a) of the Policy, the Panel finds against Respondent. 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.
Michel N. Bertschy
Sole Panelist
Dated: July 13, 2012
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