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. / Contact Privacy Inc. Customer 0133763249 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, and Toronto, Ontario, Canada, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2013. On May 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 6, 2013, the Registrar 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 May 8, 2013 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 May 14, 2013.
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 May 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 4, 2013.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 13, 2013. 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
The Complainant is a national banking association, with its place of business in Houston, Harris Country, State of Texas, United States of America. The Complainant is the registered owner of the trademarks AMEGY BANK and AMEGYBANK (Stylised) in the United States of America. The Complainant's parent company, Zions Bancorporation, is the current registrant of the domain name .
The Respondent, as disclosed by the Registrar, is ICS Inc. The Disputed Domain Name was registered through a proxy service called Contact Privacy Inc. on March 17, 2013.
The website that the Disputed Domain Name resolves to refers to bank related terms that direct consumers to third party websites and identify services that are identical or similar to the type of services offered by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
(a) The Disputed Domain Name is identical and confusingly similar to the Complainant's trade mark, in which the Complainant has rights:
(i) the Complainant is the registered owner of the AMEGY BANK and AMEGYBANK (Stylised) trade marks in the United States of America;
(ii) the Disputed Domain Name is confusingly similar to the Complaiant's AMEGY BANK and AMEGYBANK (Stylised) trade marks, as the only difference is the replacement of the letter "y" with the letter "e";
(iii) the Complainant's parent company is the current registrant of the domain name ; and
(iv) the Disputed Domain Name is likely to confuse consumers.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the Complainant began using its AMEGY BANK and AMEGYBANK (Stylised) marks on January 26, 2005, and obtained its trade mark registrations for them on July 26, 2005 and June 13, 2006, respectively;
(ii) the Respondent did not register the Disputed Domain Name until March 17, 2013;
(iii) the Complainant has not granted a licence to or authorised the use by the Respondent of, the Complainant's AMEGY BANK or AMEGYBANK (Stylised) marks;
(iv) the Disputed Domain Name is not being used for a bone fide offering of goods or services;
(v) the website that the Disputed Domain Name resolves to is misleading and may divert users away from the Complainant's website "www.", or be used in connection with phishing and fraudulent activities; and
(vi) the Disputed Domain Name, and use of on the website that the Disputed Domain Name resolves to, may tarnish the Complaint's registered mark, as they are confusingly similar.
(c) The Disputed Domain Name has been registered and used in bad faith:
(i) the Disputed Domain Name is confusingly similar to the Complainant's trade marks, i.e. only one letter has been changed;
(ii) the website that the Disputed Domain Name resolves to provides links in relation to banking-related search queries that identify services identical or similar to those offered by the Complainant;
(iii) the Respondent has displayed on the website that the Disputed Domain Name resolves to;
(iv) the Respondent is trying to direct customers of the Complainant from the Complainant's "www." website to the Respondent's; and
(v) as the Disputed Domain Name and the sign that appears on the Respondent's website is confusingly similar to the Complainant's trade marks, the Respondent is intentionally creating a likelihood of confusion with the Complainant's marks 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.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered trade mark rights in respect of the AMEGY BANK and AMEGYBANK (Stylised), based on its trade mark registrations in the United States of America.
The only difference between the Disputed Domain Name and the Complainant’s trade marks is the purposeful misspelling of “Amegy Bank”. The Disputed Domain Name is purposefully misspelled by substituting the letter "y" with the letter "e". This "typo squatting" creates a confusingly similar mark to the Complainant’s trade mark under paragraph 4(a)(i) of the Policy (see, for example, Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trade marks in which he has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
A complainant is required to establish a prima facie case in respect of the lack of rights or legitimate interests of the respondent in the domain name, following which the respondent bears the burden of proving otherwise. Where the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
In the absence of any contrary evidence from the Respondent, the Panel accepts that the Respondent is not a licensee nor associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s AMEGY BANK or AMEGYBANK (Stylised) trade marks. The Panel has also seen no evidence that the Respondent is commonly known by the Disputed Domain Name.
The Panel has viewed the Respondent's website that the Disputed Domain Name resolves to, and has determined that the Respondent's website appears to be offering sponsored link advertisements, including the listing of third party websites that promote the Complainant's competitors. The Panel therefore finds that the Respondent has not been using the Disputed Domain Name in connection with a bona fide offering of goods or services, and is instead using the Disputed Domain Name for commercial purposes, with the intent of obtaining commercial gain; to misleadingly divert consumers to the Respondent's website; and/or to tarnish the trade mark at issue.
Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove he has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not file any response, the Panel has assessed the case based on the reasonable inferences that can be drawn from the Complainant's evidence.
The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exhaustive list of circumstances which shall be evidence that a respondent has registered and used a domain name in bad faith:
(i) circumstances indicating that the respondent has 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 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 that the respondent has engaged in a pattern of such conduct; or
(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, 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 your website or location or of a product or service on your website or location.
Evidence of bad faith may include actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. 94313). While the Complainant has not provided any evidence to show that it’s AMEGY BANK or AMEGYBANK (Stylised) trademarks are well-known, the Panel accepts that the Respondent knew of the Complainant’s trade marks based on the following:
(a) the Disputed Domain Name was registered on March 17, 2013, more than eight years after the Complainant had first registered the AMEGY BANK trade mark, and more than seven years after the Complainant had registered its AMEGYBANK (Stylised) trade mark;
(b) the Complaint has been using its trade marks with regard to banking related services, and the Respondent's website is also in respect of banking related services; and
(c) the Disputed Domain Name is confusingly similar to the Complaint's trademarks and the sign displayed on the Respondent's website.
Based on the above, the Panel infers that the Respondent registered the Disputed Domain Name with the intention of trading on the reputation of the Complainant's trade marks. The Complainant's trade marks were registered and used for about eight years to market and provide banking services similar to those referred to on the Respondent's website, before the Disputed Domain Name was registered by the Respondent.
The Panel finds, therefore, that the Respondent has deliberately attempted to attract users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's trade mark. This constitutes evidence that the Disputed Domain Name was registered and is being used in bad faith.
Lastly, the sponsored links on the Respondent's website direct users to competitors of the Complainant. This further evidences that the Respondent is using the Disputed Domain Name in bad faith (see Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC,WIPO Case No. D2008-1300 and Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774).
In view of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)iii) 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 Name be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: June 27, 2013
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