Complainant is ZB, N.A. dba Amegy Bank of Salt Lake City, Utah, United States of America ("United States"), represented by TechLaw Ventures, PLLC, United States.
Respondent is Domain Admin, Privacy Protect, LLC of Burlington, Massachusetts, United States / Jason James of Flore, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2018. On May 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 17, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 22, 2018, 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 May 30, 2018.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 21, 2018.
The Center appointed R. Eric Gaum as the sole panelist in this matter on July 4, 2018. 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 is the owner of the following trademarks registered with the United States Patent and Trademark Office: AMEGY, Registration No. 3,269,288; AMEGY BANK, Registration No. 2,979,655; and AMEGYBANK (Stylized), Registration No. 3,105,196. Amegy Bank National Association was the original applicant and registrant of these trademarks, but Amegy Bank National Association subsequently assigned these marks to Complainant. These registered marks are in use by Complainant and are registered for banking and a variety of other financial services.
Complainant has been using its AMEGY mark since at least as early as January 26, 2005, and obtained federal registration for such mark on July 24, 2007. 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.
On May 1, 2018, Respondent registered the Domain Name . The Domain Name resolves to a website displaying the text "This website is under construction". 5. Parties' Contentions A. Complainant
Since August 18, 2003, Zions Bancorporation, the parent of Complainant, or its assignor, has been the registrant of the domain name , from which Complainant advertises and offers its banking services. The domain name is similarly registered to Zions Bancorporation and has been registered since August 18, 2003. The domain name redirects users to . Complainant does business under the name Amegy Bank, and Complainant or its assignors have been doing business under that name since January 26, 2005.
A side-by-side comparison of the Domain Name and Complainant's registered mark AMEGY shows that this identical mark and the dominant part of the marks AMEGY BANK and AMEGYBANK (Stylized) are included and recognizable in the Domain Name except for the addition of the descriptive word "group".
The Domain Name is otherwise confusingly similar to these registered marks. There is a risk that Internet users may believe there is a connection between the Domain Name and Complainant's products and services.
By including Complainant's registered mark and the dominant part of the other registered marks, Respondent is intentionally creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website for commercial gain.
Respondent has no rights or legitimate interests in the Domain Name. Complainant has been using its AMEGY mark in commerce since at least as early as January 26, 2005, and obtained federal registration for such mark on July 24, 2007. 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. On information and belief, and based exclusively on the WhoIs database information, Respondent acquired the registration for the Domain Name no earlier than May 1, 2018.
Before filing this Complaint, Complainant has not been aware of any evidence of 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.
Complainant is not aware that 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. Respondent is not making a legitimate noncommercial or fair use of the Domain Name; rather, Respondent's use of the Domain Name appears to be with the intent for commercial gain by misleadingly diverting consumers to Respondent's website associated with the Domain Name. Such use of the Domain Name may tarnish Complainant's registered trademarks. Respondent is not a licensee of Complainant's trademarks, and has not otherwise obtained authorization to use Complainant's marks. Respondent is not using the Domain Name as part of a bona fide offering of goods or services, or for a legitimate noncommercial use.
Respondent registered the Domain Name that includes the registered mark AMEGY, and the dominant part of Complainant's registered marks AMEGY BANK and AMEGYBANK (Stylized), except for the addition of the descriptive term "group" in the Domain Name. The use of virtually identical or similar marks in the Domain Name indicates that the Domain Name was registered primarily for the purpose of disrupting the business of Complainant, and appears to be intended to take advantage of the goodwill associated with Complainant's federally registered trademarks.
Respondent is clearly trying to exploit the goodwill of Complainant and its trademarks by diverting customers of Complainant from Complainant's website to Respondent's website for commercial gain or malicious purposes by creating a likelihood of confusion with Complainant's trademarks. By including Complainant's identical registered trademark or the dominant part of Complainant's registered trademarks in the Domain Name, Respondent is intentionally creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Complainant's registered marks were well-known and in wide use at the time the Domain Name was registered. Such marks are also highly specific with the term "Amegy" being a unique term that is only a reference to Complainant. By using Complainant's registered mark AMEGY in the Domain Name, Respondent knew or should have known about Complainant's registered marks at the time it registered the Domain Name.
In this case, Respondent appears to have intended to profit off of or exploit Complainant's trademarks due to the following: (i) Respondent is likely to have known of Complainant's federally registered marks given that the Domain Name is identical to Complainant's mark or the dominant part of Complainant's other marks; and (ii) Complainant's registered marks are distinctive. These factors, when considered together, indicate Respondent registered and is using the Domain Name in bad faith.
Because Respondent's website is accessed using the Domain Name which includes Complainant's trademarks, or the dominant part of Complainant's registered trademarks, the use of the Domain Name is misleading, and Respondent may also use it in connection with various phishing and fraudulent activities. Respondent's use of Complainant's marks may tarnish Complainant's trademarks.
Although in some cases the use of a domain name that resolves to a parking or landing page may be permissible, that is not the case in this matter where the Domain Name incorporates Complainant's marks that are well-known and highly distinctive. The apparent lack of active use of a domain name does not prevent a finding of bad faith. The use of the Domain Name to resolve to websites that may contain malware could tarnish the trademarks of Complainant and otherwise constitutes bad faith registration and use.
Complainant, or its affiliates, has prevailed on several prior UDRP complaints for domain names that include Complainant's registered marks and are similar to the Domain Name and under circumstances similar to the underlying action. In the respective decisions, the disputed domain names have been transferred to Complainant, and each of the identified domain name disputes should be given consideration for consistency. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center forwarded notification of the Complaint to Respondent via email and the written notice of the proceeding via courier in accordance with the contact details found in, inter alia, the appropriate WhoIs database and as confirmed by the Registrar. The Center also forwarded notification of default to Respondent via email.
Based on the methods employed to provide Respondent with notice of the proceeding the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent. The Panel also finds that the failure of Respondent to furnish a reply is not due to any omission by the Center.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent's domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements is present. As Respondent has failed to submit a response to the Complaint, the Panel may accept as true all of the reasonable allegations of the Complaint (see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
Based upon the registered trademarks for AMEGY, AMEGY BANK, and AMEGYBANK (Stylized), and the continuous use of the marks, Complainant clearly has rights in the marks. The Panel agrees with Complainant that the Domain Name is confusingly similar with Complainant's marks in which Complainant has rights.
The Domain Name includes Complainant's registered mark AMEGY, and the dominant portion of the registered marks AMEGY BANK and AMEGYBANK (Stylized), with the exception of the additional descriptive word "group". The Domain Name is otherwise confusingly similar to these registered marks.
The Panel finds that the Domain Name is confusingly similar to the AMEGY and related trademarks owned by Complainant pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the panel shall demonstrate the respondent's rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [respondent] of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Complainant has not licensed or authorized Respondent to use its trademarks in any manner and there has never been any relationship between them.
There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the Domain Name within the meaning of paragraph 4(c) of the Policy, or otherwise. Respondent has not come forward to assert any rights or legitimate interests in the Domain Name.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several circumstances, without limitation, that 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 [respondent] 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 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 your website or location or of a product or service on your website or location.
Respondent registered the Domain Name that includes the registered mark AMEGY, and the dominant part of Complainant's registered marks AMEGY BANK and AMEGYBANK (Stylized), except for the addition of the descriptive term "group". The use of virtually identical or similar marks in the Domain Name allows for an inference that it was registered primarily for the purpose of disrupting the business of Complainant and to take advantage of the goodwill associated with Complainant's federally registered trademarks. Furthermore, bad faith registration can be inferred when the respondent "knew or should have known" about the existence of the complainant's trademarks, especially where the complainant's marks are widely known. Complainant's registered marks were in wide use at the time the Domain Name was registered. Such marks are also highly specific with the term "Amegy" being a unique term that appears to be only a reference to Complainant. Respondent knew or should have known about Complainant's registered marks at the time it registered the Domain Name. Moreover, Respondent has failed to make any actual use of the Domain Name, which is passively held. While the Panel fails to see how Respondent's use of the Domain Name could be considered an attempt to take advantage of the goodwill associated with Complainant's trademarks "for commercial gain" (as asserted by Complainant), the Panel notes that passive holding of a domain name does not prevent a finding of bad faith. Noting the notoriety of Complainant's marks, Respondent's attempts to conceal its identity through use of a privacy service, Respondent's failure to file a Response, and the lack of use of the Domain Name on the part of Respondent, the Panel finds that the Domain Name is passively held in bad faith.
The Panel finds that Respondent's registration and use of the Domain Name, with actual or constructive knowledge of Complainant's trademark rights, establishes Respondent's registration and use of the Domain Name in bad faith pursuant to 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 Domain Name be transferred to Complainant.
R. Eric Gaum
Sole Panelist
Date: July 6, 2018
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