The Complainant is ZB, N.A., a national banking association, dba Amegy Bank of Salt Lake City, Utah, United States of America ("United States"), represented by John Rees Law, PLLC, United States.
The Respondent is Dollie Mork of Moelsheim, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 14, 2016. On September 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details of the Respondent and noting that the language of the registration agreement is German.
Pursuant to the Complaint submitted in English and the Registrar's confirmation that German is the language of the registration agreement, on September 16, 2016, the Center sent a request in English and in German that the Parties submit their comments on the language of the proceeding. On September 16, 2016, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any comment on the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").
According to paragraph 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 22, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was October 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2016.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on October 25, 2016. 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 paragraph 7 of the Rules. 4. Factual Background
The following facts appear from the Complaint and its annexes, which have not been contested by the Respondent.
The Complainant is ZB, N.A., a national banking association, dba Amegy Bank of Salt Lake City, Utah, United States. The Complainant is a company acting in the banking field.
The Complainant owns numerous registered trademarks for AMEGY, including the following:
- United States Patent and Trademark Office registration AMEGY (Registration No. 3,269,288), registered on July 24, 2007;
- United States Patent and Trademark Office registration AMEGY BANK (Registration No. 2,979,655), registered on July 26, 2005;
- United States Patent and Trademark Office registration AmegyBank (Registration No. 3,105,196), registered on June 13, 2006;
(together, the "trademarks").
Furthermore, the Complainant owns the following two domain names:
- , registered on August 18, 2003;
- , registered on August 18, 2003.
The disputed domain name was registered on August 29, 2009. At the time of filing of the Complaint, it was used in relation to a parked website with sponsored links to several banking services. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The Complainant states that a comparison of the disputed domain name and the above trademarks shows that with the exception of the omission of the letter "g" in "amegy", the Complainant's marks are included and recognizable in the disputed domain name. The Complainant asserts the existence of a risk that Internet users may believe that there is a connection between the disputed domain name and the Complainant's products and services.
Furthermore, the Complainant argues that the Respondent is intentionally creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's website for commercial gain. The Complainant asserts that the disputed domain name directs customers, either directly or indirectly, to a website that references various banking terms and links to financial services, and likely confuses customers as to the source of the goods being offered under the Complainant's trademarks. Finally, the Complainant argues that the Respondent has obviously misspelled the disputed domain name to take advantage of users seeking to find the Complainant's domain names and , and the services offered at the websites under these domain names, but who mistakenly type the disputed domain name. Rights or Legitimate Interests
The Complainant states that it has been using the trademarks in commerce since at least as early as January 26, 2005, and obtained federal registrations for the trademarks. The Complainant points out that it has not been aware of any evidences of 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. Instead, the disputed domain name resolves to a website that is displaying links to competing financial services. The Complainant points out that a use of a domain name to post parking and landing pages may in some cases be permissible, but a parking page does not by itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name.
Moreover, the Complainant states that it was not aware that the Respondent has been commonly known by the disputed domain name. Therefore, in the Complainant's view, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant states that the Respondent is not a licensee of the Complainant's trademarks and has not otherwise obtained authorization to use the Complainant's trademarks. Therefore, the Respondent is not using the disputed domain name as part of a bona fide offering of goods or services or for a legitimate noncommercial use. Registered and Used in Bad Faith
Referring to previous UDRP decisions, the Complainant argues that the identical marks, with the exception of the typographical error, in the disputed domain name indicates that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant and appears to be intended to take advantage of the goodwill associated with the Complainant's federally registered trademarks. The Complainant is of the view that the Respondent is clearly trying to exploit the goodwill of the Complainant and its trademarks by diverting customers from the Complainant's official and authorized websites to the Respondent's website for commercial gain or malicious purposes by creating a likelihood of confusion with the Complainant's trademarks.
The Complainant states that bad faith registration of a domain name can be found when a respondent knew or should have known about the existence of the complainant's trademark, especially where the complainant's trademark is well-known or in wide use at the time the domain name was registered. The Complainant argues that its registered trademarks were well-known and in wide use at the time of the registration of the disputed domain name and that the Respondent knew or should have known about the Complainant's trademarks at the time it registered the disputed domain name.
Finally, the Complainant argues that the use of the disputed domain name is misleading and may tarnish the Complainant's trademarks and that the Respondent may use the disputed domain name in connection with various phishing and fraudulent activities. B. Respondent
The Respondent did not reply to the Complainant's contentions.
Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw negative inferences from the Respondent's default where necessary. However, this does not automatically result in a decision in favor of the Complainant (cf. Cynthia Ann Crawford v. Julian S. Garcia,WIPO Case No. D2012-2454; Loris Azzaro B.V. v. Whols Agent, Whois Privacy Protection Service, Inc. / Eight Days Robin Hills,WIPO Case No. D2014‑0368; COMUTO v. Este sas di S. Terracina & C. Societa/Ditta,WIPO Case No. D2016-0758). 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is German. According to paragraph 11 of the Rules, unless otherwise agreed by 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 in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
However, paragraph 11(a) of the Rules 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. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (cf. Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) Electrical Appliance Co. Ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
- The Complainant is a company located in the United States and conducts all of its business in English.
- The Complainant has no direct business relationships in Germany and is not familiar with the German language. The Complainant is unable to communicate in German.
- The disputed domain name is English, and the Respondent chose to register a domain name in English. Inasmuch as the disputed domain name is English, the Respondent may likely be able to communicate in English.
- The Complainant is not in a position to conduct this proceeding in German without a great deal of additional expense and delay due to the need for translation of the Complaint and the supporting annexes. The Complainant has already incurred expenses to file the Complaint and to prosecute this proceeding to protect its valuable trademarks. It would be unfair and would place an undue burden on the Complainant to be forced to conduct the proceeding in German.
The Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is able to understand English. Furthermore, the Respondent had the possibility to reply to the Complainant's request that English be the language of the proceeding. However, the Respondent failed to state its point of view.
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Furthermore, the Complainant will be spared the burden of dealing with German as the language of the proceeding.
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. 6. 2. Substantive Issues
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(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 in bad faith.
The Panel will proceed to determine whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the trademarks. This is consistent with the previous decisions under the Policy cited by the Complainant (cf., e.g., Amegy Bank National Association v. Damon Nelson – Manager, Quantec, LLC/Novo Point, LLC,WIPO Case No. D2015-0269; Amegy Bank National Association v. Domain Whois Protection Service, shangguoxiang,WIPO Case No. D2014-1516).
The disputed domain name is confusingly similar to the Complainant's trademarks. The sole omission of the letter "g" in the disputed domain name does not eliminate the confusing similarity. This kind of "typosquatting" is based on confusion resulting from typing errors commonly made by Internet users (cf. Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Reality,WIPO Case No. D2009-0798; Amegy Bank National Association v. Whois Agent / ICS INC,WIPO Case No. D2014-1209).
In view of the above, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant's trademarks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights.
The Panel, therefore, holds that the Complainant fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant must make out at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name (cf. COMUTO v. Este sas di S. Terracina & C. Societa/Ditta, supra; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270). Once a prima facie case is shown, as is the case in this matter, the burden of production then shifts to the Respondent to produce evidence of its rights or legitimate interests to the Panel (cf. Swarovski Aktiengesellschaft v. blue crystal,WIPO Case No. D2012-0630).
The Panel finds that the Complainant has made an adequate prima facie case showing that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Although properly notified both in English and in German, the Respondent chose not to challenge the Complainant's allegations. There is no evidence before the Panel to support the contrary, and, therefore, the Panel has no reason to not accept the Complainant's arguments as facts.
From the evidence in front of the Panel, the Respondent does not have a company with the name "Amegy". The Respondent also does not possess any apparent rights in or to the Complainant's trademarks, and the disputed domain name was registered only after the Complainant had used its trademarks for several years. Moreover, there is nothing in the available record to indicate that the Respondent is commonly known by the disputed domain name, nor can the Respondent's use of the disputed domain name be considered a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the Respondent, having no apparent authorization to do so, appears to be trading off of the goodwill of the Complainant's trademarks by using the disputed domain name in connection with a parking page displaying sponsored links; such use not being of a nature to be considered a bona fide offering of goods or services within the meaning of the Policy.
Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name . For all these reasons, the Panel concludes that paragraph 4(a)(ii) of the Policy is established. C. Registered and Used in Bad Faith
The Policy requires the Complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the Respondent has] registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is 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 to the domain name; or
(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service 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, Internet users to [the Respondent's] 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 [the Respondent's] 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 (cf. Amegy Bank National Association v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Quantec, LLC/Novo Point, LLC, supra). 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 (cf. Amegy Bank National Association v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Quantec, LLC/Novo Point, LLC, supra; M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
Here, the Complainant argues that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. The Panel considers that the Respondent, by registering and using the disputed domain name incorporating the Complainant's registered trademarks, is indeed attempting to attract the customers to its website with links to various banking related queries, which identify services that are similar to the type of services offered by the Complainant under its registered trademarks.
The Panel finds it likely that Internet users and customers may think that the Respondent is connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. However, based on the available record, none of this is true. In the Panel's view, such misleading behavior are indicative of bad faith of the Respondent.
Having considered the above, the Panel concludes that the disputed domain name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Michael A.R. Bernasconi
Sole Panelist
Date: November 8, 2016
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