The Complainant is ZB, N.A. of Salt Lake City, Utah, United States of America (“United States”), represented by TechLaw Ventures, PLLC, United States.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2018. On August 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 29, 2018, 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 September 6, 2018 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 September 7, 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 the Respondent of the Complaint, and the proceedings commenced on September 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2018.
The Center appointed John Swinson as the sole panelist in this matter on October 11, 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
The Complainant is ZB, N.A., a company incorporated in the United States. The Complainant has operated a bank, under the name “Amegy Bank”, since January 2005. The Complainant owns a number of registered trade marks for AMEGYBANK including United States registered trade mark number 2,979,655 filed on December 8, 2003 and registered on July 26, 2005 (the “Trade Mark”).
The Complainant named two respondents in the Complaint — Domains By Proxy LLC and Carolina Rodrigues, Fundacion Comercio Electronico. Domains by Proxy LLC is the privacy service under which the Disputed Domain Name was registered. In its verification response, the Registrar informed the Center that Carolina Rodrigues, Fundacion Comercio Electronico is the current registrant of the Disputed Domain Name. As such, the Panel has proceeded on the basis that Carolina Rodrigues, Fundacion Comercio Electronico is the primary Respondent.
The Respondent did not file a Response, and consequently little information is known about the Respondent. The Respondent registered the Disputed Domain Name on August 13, 2018. According to the Complaint and relevant evidence, at the time of filing of the Complaint, the Disputed Domain Name resolved to a website containing pay-per-click (“PPC”) links. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Complainant has registered rights in the Trade Mark. The Disputed Domain Name contains the Trade Mark in its entirety with the addition of the letter “l” after the word “bank”. This is a typical example of typosquatting, a deliberate misspelling of a trade mark registered as a domain name, which is intended to confuse Internet users.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) at section 1.9, “a domain name which consists of common, obvious or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
In this case the Disputed Domain Name only differs by the addition of one letter and is therefore confusingly similar to the Trade Mark. Rights or Legitimate Interests
The Respondent has not used, or made any demonstrable preparations to use, the Disputed Doman Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a website that displays PPC links relating to a variety of services, including financial services that compete with the Complainant’s business.
The Respondent is not commonly known by the Disputed Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, but rather appears to be misleadingly diverting consumers to the Respondent’s website at the Disputed Domain Name with the intent for commercial gain.
The Respondent has not licensed or otherwise obtained authorization to use the Complainant’s Trade Mark. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name for the primary purpose of disrupting the business of the Complainant. The Complainant has been operating its business since January 2005. The Respondent registered the Disputed Domain Name 13 years after the commencement of the Complainant’s business.
The Respondent is trying to exploit the goodwill of the Complainant by diverting customers of the Complainant to its website. The Complainant’s Trade Mark was well-known and in wide use at the time the Disputed Domain Name was registered. By using the website at the Disputed Domain Name to advertise competing financial services, the Respondent knew or should have known of the Complainant’s Trade Mark at the time it registered the Disputed Domain Name.
The Disputed Domain Name has been registered using a proxy service, which is a further indication of bad faith B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview 3.0).
The Disputed Domain Name is a misspelling of the Trade Mark as it differs from the Trade Mark only by one letter. The Respondent has added the letter “l” to the end of the Trade Mark which is adjacent to the letter “k” on a standard QWERTY keyboard. A domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark and that this is clear case of typosquatting. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name featured a PPC link page at the time of filing of the Complaint. These links relate to online banking, and services competing with the Complainant’s business. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.
- The Panel accepts the Complainant’s submission that the Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. It is likely that the Respondent is receiving click-through revenue from the PPC links on the website at the Disputed Domain Name.
- As previous panels have found, typosquatting does not constitute a legitimate use of the Disputed Domain Name (see, e.g., E, Inc. v. Yingkun Guo, dba This domain is 4 sale, WIPO Case No. D2006-0694; Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the Disputed Domain Name in bad faith.
If circumstances indicate that the Respondent’s intent in registering the Disputed Domain Name was to profit in some fashion from, or otherwise exploit, the Complainant’s Trade Mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0).
The Complainant has been operating its business since January 2005. The Respondent registered the Disputed Domain Name 13 years after the commencement of the Complainant’s business.
The Disputed Domain Name resolves to a website which contains PPC links relating to the Complainant’s industry. Previous panels have found that a respondent will generally be deemed responsible for the content appearing at the relevant domain name, including where a registrar has placed a parking page with automatically generated content, unless the respondent can show some good faith attempt at preventing advertising which relates to third-party trade marks (see section 3.5 of the WIPO Overview 3.0).
As such, even if the Respondent did not intentionally cause the particular PPC links to be displayed, the Respondent has shown no such good faith attempt in this case and many of the PPC links are to financial services (being the same industry in which the Complainant operates). In the circumstances, the Panel considers it likely that the Respondent registered the Disputed Domain Name, as a misspelling of the Trade Mark, to trade off the Complainant’s reputation.
Previous UDRP panels have also found that if a respondent has engaged in typosquatting, that may be sufficient to establish registration and use in bad faith (Barnes & Noble College Bookstores, Inc. v. Oleg Techino, supra; E, Inc. v. Yingkun Guo, dba This domain is 4 sale, supra; Sephora v. WhoisGuard, WIPO Case No. D2006-0845).
This is a clear case of typosquatting having regard to the minor difference between the Disputed Domain Name and the Trade Mark. In the circumstances, the Panel considers it likely that the Respondent registered the Disputed Domain Name, as a misspelling of the Trade Mark, to trade off the Complainant’s reputation. By using the Disputed Domain Name in this way, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trade Mark.
The Panel finds that this constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Complainant succeeds on the third element 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.
John Swinson
Sole Panelist
Date: October 25, 2018
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