The Complainant is Amegy Bank National Association of Houston, Texas, United States of America, represented by Callister Nebeker & McCullough, United States of America.
The Respondents are Contact Privacy Inc. of Toronto, Canada / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names And Registrars
The disputed domain names and are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 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 October 18, 2012.
The Center verified that the Complaint together with 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 October 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2012.
The Center appointed Francine Tan as the sole panelist in this matter on November 26, 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 Panel noted that due to an administrative oversight, it appeared that the document entitled “Notification of Complaint and Commencement of Administrative Proceeding” and the Complaint and the Amended Complaint (both including annexes) were not notified to the underlying registrant, ICS INC by email. In addition, the document entitled “Written Notice” did not appear to have been sent to the underlying registrant by courier either.
In light of the above and in accordance with paragraphs 2(a) and 4(a) of the Rules, on December 20, 2012 the Panel issued the Administrative Panel Procedural Order No.1, directing the Center to formally notify the underlying registrant of the relevant documents, and set the due date for Response as January 9, 2013, which is 20 days after the Notification of Complaint, in accordance with paragraph 5(a) of the Rules. The Respondent did not submit any response by the specified due date. 4. Factual Background
The Complainant is the owner of the trade marks AMEGY BANK and AMEGYBANK (stylized) (the “Complainant’s marks”), registered with the United States Patent and Trademark Office under Registration Nos. 2,979,655 and 3,105,196, respectively. These registered marks are in use by the 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 for investments, and securities brokerage; mortgage services, namely mortgage banking, mortgage lending, and maintaining mortgage escrow accounts” and “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,” respectively.
Zions Bancorporation, the parent company of the Complainant, is the registrant of the domain name , from which the Complainant advertises and offers its banking services. This domain name has been registered since 2003.
The disputed domain names were registered on September 16, 2012. They resolve to websites that provide links to various banking-related and other search queries. The corresponding websites of the Respondent display marks containing the dominant portion of the mark AMEGY BANK. 5. Parties’ Contentions A. Complainant
1. The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s marks in which it has rights. The disputed domain names incorporate the dominant portion of the Complainant’s marks. The disputed domain name (the “first disputed domain name”) includes the word “band” which is similar in sight and sound to the word “bank” which features in the Complainant’s marks. The disputed domain name (the “second disputed domain name”) includes the word “mortage” which presumably should be spelled correctly as “mortgage”. The disputed domain names direct consumers, either directly or indirectly, to a website that references various banking terms which is likely to confuse consumers as to the source of the goods or services being offered.
2. The Complainant asserts that the Respondents have no rights or legitimate interests in the disputed domain names. The Complainant has been using its AMEGY BANK mark in commerce since at least as early as 2005 and obtained federal registration for the mark on July 26, 2005. Its AMEGYBANK (stylized) mark has been used in commerce since at least as early as 2005 and U.S. federal registration for the mark was obtained on June 13, 2006. The disputed domain names were registered only in September 2012. The Respondents are not licensees of the Complainant’s marks, nor have they otherwise obtained authorization to use the Complainant’s marks. The Respondents are not using the disputed domain names as part of a bona fide offering of goods or services. Instead, the Respondents appear to be using the disputed domain names to provide various banking-related or other search queries that direct consumers to the websites of third parties. The use of the Complainant’s marks in the disputed domain names and on the Respondents’ websites is misleading and may be used by the Respondents in connection with various phishing and fraudulent activities. The Respondents’ use of the Complainant’s marks may tarnish the Complainant’s marks.
3. The Complainant asserts that the Respondents registered and are using the disputed domain names in bad faith. This is supported by the following facts and circumstances:
(a) The Respondents registered the disputed domain names containing the dominant portion of the Complainant’s marks which make them confusingly similar thereto.
(b) The disputed domain names lead to websites that provide links to various banking-related and other search queries, which identify services that are identical or similar to the type of services offered by the Complainant under its registered marks.
(c) The Respondents have displayed marks containing the dominant portion of the mark AMEGY BANK on the websites associated with the disputed domain names. While there may be insufficient information available to confirm that the said websites are operated by a competitor, the Respondents are clearly trying to divert customers of the Complainant from the Complainant’s website to the Respondents’ websites by using the dominant portion of Complainant’s marks in the disputed domain names and on the Respondents’ websites. The terms “band” and “mortage” in the respective disputed domain names are nearly identical or descriptive of the terms contained in the Complainant’s registered marks. They therefore do not distinguish the disputed domain names from any of the Complainant’s marks. Furthermore, by using the dominant portion of Complainant’s marks in the Domain Names and on the associated websites, the Respondents are intentionally creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion And Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant has to prove each of the following in order to obtain the transfer of the disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has proven that it has rights in the trade marks AMEGY BANK and AMEGYBANK (stylized). The next question to be considered is whether the disputed domain names are confusingly similar to the trade mark AMEGY BANK/AMEGYBANK. The Panel is of the view that that the addition of the generic terms “band” and “mortage” in the respective disputed domain names does not remove the confusing similarity with the AMEGY BANK / AMEGYBANK trade mark (see Nokia Corporation v. N aka IBCC, WIPO Case No. D2000-0102; EAuto L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096.)
The Panel agrees that the word “band” in the first disputed domain name is aurally and visually similar to the word “bank”, the difference between the words lying only in the last letter. There is a likelihood of typographical errors when Internet users looking for the Complainant’s website type in the domain name . The word “mortage” is a mis-spelling of the descriptive term “mortgage”, whether intentional or not. Again, in this connection, there is a high likelihood of a typographical error by Internet users typing the domain name . Taking into account the nature of the Complainant’s business and the kind of links offered on the Respondents’ website (i.e. links to other banks, and links to offers of credit cards, loans and mortgages), the Panel is all the more of the view that the addition of the term “mortage” adds to the confusion with the Complainant’s marks.
The Panel therefore finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(b) of the Policy provides that a complainant must establish a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name. Thereafter, the respondent has the burden of rebutting the presumption and there are a number of ways he can do this, as set out in paragraph 4(c) of the Policy.
The Panel finds that the Complainant has succeeded in establishing a prima facie case of the Respondents’ absence of rights or legitimate interests in the disputed domain name. There is no evidence that the Respondents are commonly known by the disputed domain names. The Complainant did not authorize the Respondents to use its trade marks in the disputed domain names and neither is there evidence that the Respondents have made use of, or demonstrable preparations to use, the disputed domain names, or name corresponding to the disputed domain names, in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. In coming to its finding, the Panel has taken into account the arbitrary and distinctive nature of the word “Amegy” in the Complainant’s marks as well as the combination of the said word with the word “band” (which is similar in sound and look to the word “bank”) in the first disputed domain name, and with the mis-spelt word, “mortage”, in the second disputed domain name. The Panel has also noted that the domain name (i.e. with the word “mortgage” correctly spelt) resolves to the Complainant’s website and that it was registered in the name of the Complainant’s parent company, Zions Bancorporation, since December 4, 2003. The Respondents were probably aware of the unavailability of the domain name and therefore deliberately chose a domain name which was very closely similar thereto. This appears to be a case of typosquatting and the Panel makes a negative inference in the relation to the Respondents’ choice of the disputed domain names.
The Complainant has therefore successfully established that the Respondents have no rights or legitimate interests in the disputed domain names. As the Respondents have not filed a Response to rebut the prima facie case, the Panel finds in favor of the Complainant.
The Panel therefore concludes that paragraph 4(a)(ii) of the Policy has been established. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use can be found to be established in any of the following situations:
(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 who is the owner of the trade mark 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) the respondent 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 that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent 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 the respondent’s web site 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 web site or location or of a product or service on the web site or location.
The Panel finds that the third element of paragraph 4(a) of the Policy has been established by the Complainant.
There appears to be bad faith registration of the disputed domain names. It is not plausible that the Respondents did not know of the Complainant’s trade marks when they registered the disputed domain names. “Amegy” is a non-existing English word and the Respondents have not offered any explanation of how they came to adopt and choose the disputed domain names which incorporate the word “Amegy”. The registration of the second disputed domain name (being a combination of the distinctive portion of the Complainant’s marks with the mis-spelt word “mortage”) in a situation where was already registered as a domain name and was not available for registration at the time the second disputed domain name was registered, is a telltale sign of bad faith on the Respondents’ part. The registration of the first disputed domain name (being a combination of the distinctive portion of the Complainant’s marks with the word “band”) in a situation where had already been registered by the Complainant’s parent company is also a factor which suggests bad faith registration.
The Panel further draws a negative inference from the Respondents’ failure to file a Response and concludes that their registration of the disputed domain names was made in a bid to attract Internet users to their website for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website (paragraph 4(b)(iv) of the Policy). In the absence of any evidence to the contrary from the Respondents, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy. 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 disputed domain names and be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: January 14, 2013
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