Complainant is Amegy Bank National Association of Houston, Texas, United States of America, represented by Callister Nebeker & McCullough, United States of America.
Respondent is Contact Privacy Inc. Customer 0136596179 of Toronto, Ontario, Canada / Banks Joseph, of Rochester, Minnesota, United States of America. 2. The Domain Name and Registrar
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 June 10, 2014. On June 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2014, 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 Complainant on June 12, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 16, 2014.
The Center verified that the Complaint together with the amendment to the 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 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 8, 2014.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 17, 2014. 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 Amegy Bank National Association is a national banking association with its place of business in Houston, Texas. Complainant owns trademark registrations for AMEGY BANK, registered July 5, 2005, and AMEGYBANK (Stylized), registered June 13, 2006.
According to the WhoIs information, the domain name was registered on February 3, 2014. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant further contends that Respondent has no rights or legitimate interests with respect to the disputed domain name. Complainant further contends that Respondent registered and used the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The record indicates that Complainant has trademark rights in AMEGY BANK and AMEGYBANK (Stylized). The differences between the disputed domain name and Complainant’s mark is the addition of an “e” and the omission of the word “bank”. Such minimal changes do not create any distinctiveness that could prevent confusion. Further, Complainant’s registration for AMEGY BANK disclaims any exclusive right to the word “bank”. (Annex 4 to the Complaint.) As such, the disputed domain name has taken the key portion of Complainant’s mark.
The Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in that the disputed domain name is confusingly similar to Complainant’s marks. B. Rights or Legitimate Interests
The record indicates that Complainant has used its marks as early as January 26, 2005 and that the disputed domain name was registered on February 3, 2014. Respondent has provided no evidence to indicate any rights or legitimate interests in the disputed domain name prior either to its registration, Complainant’s first use of its marks, or Complainant’s registrations of its trademark. Complainant has asserted that Respondent owns no license and has received no authority to use Complainant’s marks; nor has Respondent made any assertion to the contrary. Based on the record, it appears that Respondent’s use of the disputed domain name is commercial and potentially linked to gaming and discussion of prostitution.
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Respondent’s registration of the disputed domain name contains the dominant portion of Complainant’s registered marks and is confusingly similar to Complainant’s marks. Such registration, in light of Complainant’s trademark registrations indicates that Respondent registered the disputed domain name in bad faith. Further, Complainant has asserted that the website resolving from the disputed domain name provides direct or indirect links to banking-related search queries that identify services that are identical or similar to the services offered by Complainant. Such use would constitute an attempt to divert customers from Complainant to Respondent’s disputed domain name for commercial gain and therefore bad faith use. However, the Panel could not find any evidence in the record of such use. The disputed domain name is currently inactive. The Panel considers the passive holding of the disputed domain name, where Respondent has provided no evidence of good faith or mitigating circumstances or facts, to be sufficient in this case for a finding of bad faith use.
Complainant has asserted that Respondent’s use of the disputed domain name for gaming and the discussion of prostitution constitutes tarnishment, which is further evidence of bad faith. Complainant has not offered any evidence as to the illegality of either of these activities in the relevant jurisdictions. Without deciding the issue of tarnishment, Complainant has nonetheless established bad faith registration and use.
Complainant has established that Respondent registered and used the disputed domain name in bad faith, and has satisfied the requirements 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.
Kimberley Chen Nobles
Sole Panelist
Date: July 25, 2014
Full & Egal Universal Law Academy