Complainant is Amegy Bank National Association of Houston, Texas, United States of America, represented by Callister Nebeker & McCullough, United States of America.
Respondents are Domain Whois Protection Service of Hangzhou, Zhejiang, China, and shangguoxiang of Xi'an, Shanxi, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hangzhou AiMing Network Co., LTD (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2014. On September 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5 and 18, 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 September 19, 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 September 22, 2014. On September 19, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 20, 2014, Complainant confirmed its request that English be the language of the proceeding. Respondents did not comment on the language of the proceeding by the specified due date.
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 Respondents of the Complaint, and the proceedings commenced on September 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2014. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on October 17, 2014.
The Center appointed Yijun Tian as the sole panelist in this matter on October 27, 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 A. Complainant
Complainant is Amegy Bank National Association, incorporated in Houston, Texas, United States of America (the "US"). Complainant is a subsidiary of Zions Bancorporation. Complainant owns AMEGY BANK and AMEGYBANK trademark ("AMEGY Marks") registrations in the US. The AMEGY BANK mark was registered since July 26, 2005, and the AMEGYBANK mark was registered since June 13, 2006. .
In addition, Complainant registered the domain name on August 18, 2003 (the current registrant of the domain name is Complainant's parent company, Zions Bancorporation) in order to advertise and offer its banking services. B. Respondents
Respondents are (1) Domain Whois Protection Service of Hangzhou, Zhejiang, China, and (2) Shangguoxiang of Xi'an, Shanxi, China. Respondents registered disputed domain name on July 28, 2014, well after the AMEGY Marks were registered. 5. Parties' Contentions A. Complainant
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights
Complainant owns AMEGY BANK and AMEGYBANK trademark registrations in the US. The AMEGY BANK mark was registered since July 26, 2005, and the AMEGYBANK mark was registered since June 13, 2006.
Complainant is a subsidiary of Zions Bancorporation. Complainant registered the domain name on August 18, 2003, and its parent company, Zions Bancorporation, is the current registrant of the domain name. The domain name is the home page of Complainant from which it advertises and offers its banking services.
The disputed domain name is highly similar or identical to the dominant part of Complainant's registered AMEGY BANK and AMEGYBANK (Stylized), and is otherwise confusingly similar to these registered marks.
The disputed domain name has only added in the letter "n" to the beginning of the word "Amegy" to create .
(b) Respondents have no rights or legitimate interests in respect the disputed domain name
Complainant has been using its AMEGY BANK mark in commerce since at least as early as January 26, 2005, and obtained federal registration for such mark on July 26, 2005.
Complainant has been using its AMEGYBANK (Stylized) mark in commerce since at least as early as January 26, 2005 and obtained federal registration for such mark on June 13, 2006.
Respondents acquired the registration for the disputed domain name no earlier than July 28, 2014.
Respondents are not licensees of Complainant's trademarks, and have not otherwise obtained authorization to use Complainant's marks.
The website associated with the disputed domain name is not active. Respondents are not using the disputed domain name as part of a bona fide offering of goods or services or for a legitimate noncommercial use.
The use of Complainant's marks in the disputed domain name and on Respondents' website in the future could be misleading and divert consumers to a website associated with the disputed domain name instead of Complainant's official and authorized website.
(c) The disputed domain name was registered and is being used in bad faith
Respondents registered the disputed domain name that contains the dominant portion of and is identical or virtually identical to the registered marks AMEGY BANK and AMEGYBANK (Stylized) and is confusingly similar to such marks.
The use of identical or similar marks in the disputed domain name indicates that the disputed domain name was registered primarily for the purpose of disrupting the business of Complainant.
By using the dominant portion of Complainant's marks in the disputed domain name and on the associated website, Respondents are intentionally creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondents' website.
Complainant has prevailed on prior complaints for domain names similar to the disputed domain name. The panelists found bad faith registration and use of the domain names , , , and and awarded transfers of the domain names to Complainant. Each of the domain names is result of typosquatting and is very similar. B. Respondents
Respondents did not reply to Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondents to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant is an organization in the US, and conducts all of its business in English;
(b) All of the terms included in the disputed domain name are in English, and Respondents chose to register a domain name in English;
(c) Complainant is unable to communicate in Chinese;
(d) Complainant is not in a position to conduct these proceedings in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint and the supporting annexes;
(e) It would be unfair to Complainant to be forced to conduct the proceedings in Chinese.
Respondents did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006‑0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states:
"in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement". (WIPO Overview 2.0, paragraph 4.3; see also L'Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from the US, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name includes the Latin characters "namegy" (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondents appear to be Chinese and are thus presumably not native English speakers, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondents may have sufficient knowledge of English. In particular, the Panel notes that, the disputed domain name is registered in Latin characters rather than Chinese script. Additionally, at the time of this decision, the Panel notes that the website at the disputed domain name is being used as a Chinese-based website but it does contain some English words, including a few website category headings "English", "About", "News", "More" and "Planning".1 It seems that Respondents plan to provide both Chinese version and English version contents (the website contains both English language and simplified Chinese language options) although the English version page is inactive.2 Respondents are apparently planning to do business in both Chinese and English. The website to which the disputed domain name resolves appears to be directed to Internet users worldwide and is not limited to Chinese speakers. The Center has notified Respondents of the proceedings in both Chinese and English, and Respondents have indicated no objection to Complainant's request that English be the language of the proceeding. The Center informed Respondents that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2 Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant owns AMEGY BANK and AMEGYBANK trademark registrations in the US. The AMEGY BANK mark was registered since July 26, 2005, and the AMEGYBANK mark was registered since June 13, 2006.
The disputed domain name comprises the dominant part of AMEGY BANK and AMEGYBANK marks – AMEGY. The only difference from the AMEGY mark is the prefix "n" and the addition of the generic Top-Level Domain (gTLD) ".net".
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
UDRP panels have also consistently held that "[t]he applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark" (see WIPO Overview 2,0, paragraph 1.2 and cases cited therein).
The Panel finds that the prefix "n" and the gTLD ".net" does do not eliminate the confusing similarity between Complainant's registered AMEGY Marks and the disputed domain name .
The Panel therefore holds that Complainant fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that respondent has rights or legitimate interests in a domain name:
(i) before any notice to respondent of the dispute, 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; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) 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 overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG , DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
In the present case, Complainant has rights in the AMEGY BANK and AMEGYBANK trademark registrations in the US. According to the information provided by Complainant, Respondents are not licensees of Complainant's trademarks. Neither have they obtained authorization to use Complainant's marks. Complainant has therefore established a prima facie case that Respondents have no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons, the Panel finds that Respondents have no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondents are using or has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondents have not provided persuasive evidence of legitimate use of the disputed domain name or credible reasons to justify the choice of the term "Amegy" or "namegy". Moreover, there has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the AMEGY Marks or to apply for or use any domain name incorporating the dominant part of the AMEGY Marks – AMEGY.
(b) There has been no evidence adduced to show that Respondents have been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the disputed domain name. The disputed domain name was registered on July 28, 2014, which is well after the date Complainant registered AMEGY Marks in the US (since 2005 and 2006 respectively). The disputed domain name is identical or confusingly similar to Complainant's AMEGY Marks.
(c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the disputed domain name. According to Complainant, the disputed domain name was not associated with any active website. As previously noted, the disputed domain name is currently active but many of the links on the website do not work (the link for the English version of the website). It seems that Respondents attempt to capture traffic from consumers looking for information regarding Complainant (see also the analysis under the next element).
The Panel finds that Respondents have failed to produce any sufficient evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that Complainant fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith, namely:
(i) circumstances indicating that respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) respondent has registered the disputed 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's websites or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or location or of a product or service on respondent's website or location.
According to Complainant, the disputed domain name was inactive. In line with previous UDRP decisions, passive holding of a disputed domain name does not prevent a finding of bad faith registration and use. As to the current use of the disputed domain name, the Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable. Accordingly, it is adequate to conclude that Respondents have registered and used the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has been using its AMEGY BANK mark in commerce since at least as early as January 26, 2005, and obtained the US federal registration for such mark on July 26, 2005. Complainant has been using its AMEGYBANK (Stylized) mark in commerce since at least as early as January 26, 2005 and obtained the US federal registration for such mark on June 13, 2006. As such, it is not conceivable that Respondents would not have had actual notice of Complainant's trademark at the time of the registration of the disputed domain name. The Panel therefore finds that the AMEGY Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondents have chosen not to formally respond to Complainant's allegations. According to the panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith". (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant's AMEGY Marks. b) Used in Bad Faith
Complainant claimed that the website associated with the disputed domain name was not active, and Respondents are not using the disputed domain name as part of a bona fide offering of goods or services or for a legitimate noncommercial use. As previously noted, passive holding of a disputed domain name does not prevent a finding of bad faith use.
Currently, the disputed domain name is active, and the Panel finds that by using a confusingly similar disputed domain name, Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents' website. Given the widespread reputation of the AMEGY Marks, the Panel finds that Respondents' use of the disputed domain name is likely to cause confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, in an apparent attempt to capture traffic from consumers looking for information regarding Complainant's products/services or Complainant's websites, and to direct such consumers instead to Respondents' website at the disputed domain name. (See Ron L. Hilton v. Heng Zhong,WIPO Case No. D2014-1325). Potential partners and end users are led to believe that the disputed domain name is either Complainant's domain name or the domain name of official authorized partners of Complainant, which it is not. Moreover, Respondents have not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondents in bad faith.
In summary, Respondents, by choosing to register and use a domain name which is confusingly similar to Complainant's trademark, intended to disrupt Complainant's business and/or ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondents, the choice of the disputed domain name and the conduct of Respondents is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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 Complainant.
Yijun Tian
Sole Panelist
Dated: November 24, 2014
1
2
Full & Egal Universal Law Academy