The Complainant is ZB, N.A., a national banking association, dba Amegy Bank of Salt Lake City, Utah, United States of America, represented by TechLaw Ventures, PLLC, United States of America.
The Respondent is Ibunor Hope of Warri, Nigeria, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 30, 2017. On May 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2017. Apart for the two emails received from the Respondent of June 6 and June 8, 2017, no formal Response was filed with the Center.
The Center appointed Alexandre Nappey as the sole panelist in this matter on July 6, 2017. 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 ZB, N.A. a national banking association with multiple divisions, including Amegy Bank.
The Complainant is the owner of the following trademarks including the term "amegy" and the two words "amegy bank" registered with the United States Patent and Trademark Office:
- AMEGY, trademark No. 3269288 registered on July 24, 2007 for banking services; online banking; investment banking, advice, brokerage and management services; securities brokerage services; insurance agency, administration and consultation services; mortgage banking and lending services; equipment financing services;
- AMEGY BANK, trademark No. 2979655 registered on July 26, 2005 for banking services; investment services, namely investment fund, transfer and transaction services, funds investment, investment advice, investment brokerage, investment consultation, investment management, maintaining escrow accounts for investments, and securities brokerage; mortgage services, namely mortgage banking, mortgage lending, and maintaining mortgage escrow accounts;
- AMEGYBANK (Stylized), registration No. 3105196 registered on June 13, 2006 for banking services; on-line banking; investment banking, advice, brokerage and management services; securities brokerage services; Insurance agency, administration and consultation services; mortgage banking and lending services; equipment financing services.
The disputed domain name was registered on May 8, 2017.
At the time of the drafting of the decision, the website at the disputed domain name does not appear to be active. 5. Parties' Contentions A. Complainant
(1) The Complainant first alleges that the disputed domain name is confusingly similar to its earlier trademarks AMEGY and AMEGY BANK.
The disputed domain name incorporates the Complainant's trademark AMEGY with the sole addition of the descriptive terms "bank" and "international" which exacerbate confusing similarity by suggesting the Complainant offers international banking services.
(2) Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Before filing the Complaint, the Complainant has not been aware of any evidence 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.
As the disputed domain name resolved to a website that is identical to the Complainant's website, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name
The Respondent is not a licensee of the Complainant's trademarks and has not obtained authorizations to use them.
(3) Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.
As the disputed domain name resolved to a website that is virtually identical to the Complainant's website, the Respondent is clearly trying to exploit the goodwill of the Complainant and its trademarks by diverting customers of the Complainant from the Complainant's website to the Respondent website for commercial gain or malicious purposes. B. Respondent
Except for the Respondent's emails dated June 6 and June 8, 2017, in which the Respondent claimed that the use of the disputed domain name has been made without the Respondent knowledge or authorization by a third party using the Respondent's data, the Respondent did not formally reply to the Complainant's contentions. 6. Discussion and Findings
Notwithstanding the lack of a formal response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel "shall draw such inferences therefrom as it considers appropriate".
Having evidenced to the Parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following: A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights in AMEGY BANK, which predate the registration of the disputed domain name .
The Panel finds that the disputed domain name is confusingly similar to the registered AMEGY BANK trademark owned by the Complainant.
Indeed, the disputed domain name incorporate the entirety of the Complainant's AMEGY BANK trademark with the mere addition of the descriptive word "international" which can directly refers to the Complainants activity and does not avoid confusing similarity.
See for instance: OLX B.V. v. Muhammad Amjad Shaheen,WIPO Case No. D2017-0127 concerning "The word "international" in the context of business implies global or at least international operations. In any event, the addition of "international" does not dispel the confusing similarity between the disputed domain name, which contains OLX as the first and dominant part of the domain name, and the Complainant's trademark."
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances are situations that can demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the respondent] 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] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the respondent] has acquired no trademark 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 trademark or service mark at issue.
Considering the difficulty to demonstrate a negative, UDRP panels generally find it is sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its AMEGY BANK trademark.
It results from the circumstances that the Respondent does not own any right on the trademark AMEGY BANK or is commonly known by the disputed domain name.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.
It provides that:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Since AMEGY BANK is a distinctive trademark which was registered on 2005 whereas the disputed domain name was registered only on 2017 (12 years later) and there is no evidenced relationship between the Parties, it may be assumed that the Respondent was aware of the Complainant's trademark at the time it registered the disputed domain name .
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the AMEGY and AMEGY BANK trademarks as the Respondent has used the disputed domain name in connection with a website reproducing the Complainant's look and feel.
As to bad faith use, by fully incorporating the AMEGY and AMEGY BANK trademarks into the disputed domain name and by using such domain name in connection with a website advertising the Complainant's services, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
The disputed domain name is not resolving to an active website at the time of the decision. However, the consensus view amongst UDRP panels is that "the uses of a domain name including a blank page or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. "A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks. However the registration of two domain names in the same case is not generally sufficient to show a pattern, nor is a single prior example of apparent bad faith domain name registration. Although panels will generally look to the specific circumstances, a pattern normally requires more than one relevant example". See section 3.3 of the WIPO Overview 3.0.
In this case, the fact that the disputed domain name has been used to resolve to a copy of the Complainant's main website, likely to phish Internet users, leads the Panel to consider unconceivable that any future use of the disputed domain name might be in good faith.
The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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.
Alexandre Nappey
Sole Panelist
Date: July 15, 2017
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