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 Domain Hostmaster, Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / Quantec, LLC/Novo Point, LLC of Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2015. On January 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2015, 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 January 26, 2015 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 amendment to the Complaint on January 29, 2015.
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 response to an email communication from a third party of January 26 and 28, 2015, the Complainant requested a suspension of the administrative proceeding for 30 days in order to explore a settlement on February 2, 2015. The administrative proceeding was suspended on February 3, 2015. On February 11, 2015 the Complainant requested re-institution of the proceeding. On February 13, 2015, the proceeding was reinstituted.
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 February 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the parties about the commencement of panel appointment process on March 10, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on March 17, 2015. 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 the owner of registrations for its AMEGY, AMEGY BANK, and AMEGYBANK (stylized) (hereinafter “the Complainant’s AMEGY marks”), issued by the United States Patent and Trademark Office on July 24, 2007, July 5, 2005, and June 13, 2006, respectively. The Complainant’s AMEGY marks have been used by the Complainant since as early as January 26, 2005, in connection with banking, investment, and other related products and services. The Complainant registered the domain name , used with the Complainant’s official website, in August 2003.
The disputed domain name originally was registered on November 23, 2005, and was most recently renewed on December 14, 2014. At the time the Complaint in this matter was filed, Domain Hostmaster, Whois Privacy Services Pty Ltd was listed as the registrant of the disputed domain name. Subsequently, the Registrar identified Domain Admin: Damon Nelson - Manager, Quantec, LLC/Novo Point LLC as the underlying registrant. Prior to the filing of the Complaint the disputed domain name resolved to a parking page with sponsored listings for “Amegy Bank” and “Bank”, accompanied by the following statement: “The Best Place To Find Amegy Bank”. .
There is an indication in the record that the disputed domain name at one time may have been part of a portfolio of domain names subject to a receivership proceeding, which has since been terminated. In connection with the suspension of this administrative proceeding for settlement exploration purposes, an individual identifying himself as the Respondent’s attorney offered to sell the disputed domain name to the Complainant for USD 1,000. No settlement was reached, and the proceeding was reinstituted as the request of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar and “virtually identical” to the Complainant’s AMEGY marks, noting that the disputed domain name differs from the Complainant’s AMEGY BANK and AMEGYBANK marks only by the substitution of the letter “l” for the letter “k” in “bank”. The Complainant asserts that this misspelling is deliberate and intended to create Internet user confusion with the Complainant’s marks.
The Complainant maintains that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant relates that it had registered the AMEGY BANK mark and used each of the asserted AMEGY marks in commerce before the disputed domain name was first registered in November 2005. According to the Complainant, the Respondent has not been licensed or otherwise been authorized to use the Complainant’s AMEGY marks, and the Complainant submits that the Respondent is not using the mark in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, even if the disputed domain name is simply parked, citing Zions Bancorporation v. James Murphy,WIPO Case No. D2014-1722.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the Respondent’s registration and use of the disputed domain name that is confusingly similar and virtually identical to the Complainant’s AMEGY marks indicates that the Respondent’s primary motive was to disrupt the business of the Complainant and take advantage of the Complainant’s good will associated with the Complainant’s marks. The Complainant characterizes the Respondent’s registration and use of the disputed domain name as typosquatting, asserting that the Respondent clearly is attempting to divert customers from the Complainant’s website by creating a likelihood of confusion with the Complainant’s AMEGY marks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issues A. The United States District Court Receivership Action
The receivership action referred to in the record of this case has previously been considered by the distinguished panel in Saia, Inc. v. Whois Privacy Services Pty Ltd / Damon Nelson - Manager, Quantec, LLC/Novo Point, LLC,WIPO Case No. D2014-1158. In this earlier case, the WIPO panel was provided with a copy of the District Court’s Order of February 28, 2014, which directed the winding down of the receivership, including the return of receivership assets to the Respondent herein. The Court’s Order further directed the Receiver to remove all impediments to the Respondent exercising control over its assets, and vacated orders appointing Damon Nelson as manager of the Respondent’s assets. The Court’s Order further denied a request to enjoin third-party actions regarding the Respondent’s assets, with the Court noting that it lacked jurisdiction over disputes regarding ownership of these assets.
Under paragraph 18(a) of the Rules, the Panel has the discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at Paragraph 4.14. There is no indication in the record before this Panel that the disputed domain name currently is the subject of any other ongoing legal proceeding. Under the Court’s Order of February 28, 2014, the disputed domain name, if indeed a part of the receivership assets, by now would have been returned to the Respondent. The Panel notes that the Respondent has never requested that this proceeding be suspended or terminated based on the receivership action. Moreover, the Respondent has taken actions, including offering to sell the disputed domain name, consistent with the removal of any impediments to the exercise of control of its assets. In light of all of the foregoing, the Panel finds no reason why this administrative proceeding under the UDRP should be suspended or terminated, and will proceed to a decision on the merits. B. Respondent Identity
The Registrar has identified the Respondent Quantec, LLC/Novo Point, LLC as the actual (or underlying) registrant of the disputed domain name. While Damon Nelson also was identified as a registrant, it is clear from the record that Mr. Nelson was appointed by the U.S. District Court to as a manager of receivership assets, an appointment subsequently vacated by the Court in its Order of February 28, 2014. The Panel thus is satisfied that Quantec, LLC/Novo Point, LLC is the proper Respondent in this case. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s AMEGY marks, in which the Complainant has demonstrated rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement. The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is confusingly similar to the Complainant’s AMEGY marks for purposes of the Policy. The disputed domain name in this case incorporates “AMEGY”, the dominant portion of the Complainant’s marks, and would be virtually identical to the Complainant’s AMEGY BANK and AMEGYBANK marks but for the substitution of the letter “l” for the letter “k” in the word “bank”. The foregoing is strongly evocative of the practice commonly referred to as “typosquatting” – the intentional registration and use of a domain name that is a common misspelling of a distinctive mark. In a typical “typosquatting” case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by Internet users seeking the complainant’s commercial website and divert them to the respondent’s website. Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035.
Although the generic Top-Level Domain (“gTLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar to the Complainant’s distinctive AMEGY marks. Given this, the strong indicia of typosquatting, and the Respondent’s use of the disputed domain name to divert Internet traffic to an apparent pay-per-click parking site, a prima facie showing has been demonstrated.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, and in particular the strong evidence of typosquatting, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s AMEGY marks when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s marks through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Respondent almost certainly registered the disputed domain name in order to divert Internet users to the Respondent’s pay-per-click parking page. Under the attendant circumstances, this does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
As noted above, the Respondent has not been authorized to use the Complainant’s marks, and has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The Panel, after reviewing of the facts and circumstances in the record, and absent any reply by the Respondent, finds nothing to support a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. 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. See 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 circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the absence of any reply by the Respondent, the Panel considers that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights. This appears to be a classic case of typosquatting, in which the Respondent registered and has intentionally used the disputed domain name for commercial gain, in order to divert Internet users to a pay-per-click parking site, relying on typographical errors made by Internet users seeking the Complainant’s website. See, e.g., Red Bull GmbH v. Grey Design, supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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.
William R. Towns
Sole Panelist
Date: March 30, 2015
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
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