The Complainant is Zions Bancorporation, N.A., United States of America, (“United States”), represented by TechLaw Ventures, PLLC, United States.
The Respondent is WHOISGUARD, INC./ Ennio Piazza, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2019. On May 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2019, 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 May 28, 2019, 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 May 29, 2019.
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 May 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2019.
The Center appointed Alistair Payne as the sole panelist in this matter on June 24, 2019. 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, based in the United States, provides banking services. It owns a number of United States federal trade mark registrations that incorporate the AMEGY mark including word mark registration 3269288 registered on July 24, 2007, and the word mark AMEGY BANK under registration number 2,979,655 that was registered on July 26, 2005. The Complainant’s parent, Zions Bancorporation has owned the domain name since September 18, 2003, from which the Complainant offers its banking services. The Complainant has traded under the AMEGY BANK name and mark since January 26, 2005.
Based on the WhoIs database, the Respondent, resident in Italy, registered the disputed domain name on May 15, 2019. The disputed domain name resolves to a pay-per-click parking page with links to other financial services. 5. Parties’ Contention A. Complainant
The Complainant submits that its AMEGY and AMEGY BANK marks are wholly incorporated into the disputed domain name. It says that as the “.fun” generic Top-Level Domain (gTLD) name root is disregarded under an assessment of the first element that the disputed domain name is therefore either identical or confusingly similar to the Complainant’s registered trade marks.
The Complainant says that it has been using both its AMEGY mark and its AMEGY BANK mark in commerce since January 26, 2005. It says that the Respondent is not authorised or permitted to use the Complainant’s marks and that it is not aware of the Respondent’s use of or demonstrable preparations for use of the disputed domain name in connection with a bona fide offering of goods or services. Instead, says the Complainant, the disputed domain name resolves to a website that references banking terms and displays pay-per-click links to a variety of competing financial services. This says the Complainant is not bona fide use in circumstances that the Respondent is using the Complainant’s distinctive name and mark in the disputed domain name and is using it to resolve to a website that trades off the Complainant’s trade marks. The Complainant also says that it is not aware that the Respondent has been commonly known by the disputed domain name. It says that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, rather the Respondent’s use appears to be with the intent for commercial gain by misleadingly diverting consumers to a website with links to competing financial services. Accordingly, says the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant submits that the disputed domain name is identical or confusingly similar to its registered marks and also considering the degree of distinctiveness of the Complainant’s marks, the degree of renown and goodwill attaching to the Complainant’s marks and that the website to which the disputed domain name resolves contains links to competing banking and financial services products (and even if automatically produced the Respondent has made no efforts to prevent the inclusion of competing links), then it is apparent that the Complainant knew of the Complainant and its marks when it registered the disputed domain name and did so in bad faith. It says that by including the Complainant’s marks in the disputed domain name, the Respondent is intentionally creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and seeks to benefit commercially as a result from the pay-per-click links to competing financial services products. The Complainant submits also that the Respondent’s use of a privacy service further supports an inference of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns United States registered trade marks for the AMEGY mark, including word mark registration 3269288 registered on July 24, 2007, and the word mark AMEGY BANK that was registered under number 2,979,655 on July 26, 2005. The disputed domain name wholly incorporates each of these trade marks which fact suffices to fulfill the threshold requirements of this element of the Policy.
The gTLD “.fun” may be disregarded for the assessment of the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trade mark rights and the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has asserted that it has been using both its AMEGY mark and its AMEGY BANK mark in commerce since January 26, 2005. It says that it has neither authorised nor permitted the use of the Complainant’s marks and that it is not aware that the Respondent is known by the disputed domain name, or of the Respondent’s use of, or demonstrable preparations for use of the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further says that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name but rather appears to be using the disputed domain name with the intent for commercial gain by misleadingly diverting consumers to a website with links to competing financial services.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which case has not been rebutted by the Respondent. For this reason and for the reasons set out under Section C below, the Panel finds that the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith
It appears that the disputed domain name was acquired by the Respondent in 2019, many years after the Complainant registered its trade marks for AMEGY and AMEGY BANK and long after the Complainant offered its banking services on its website at “www.”. Considering that the AMEGY element of the Complainant’s trade marks is highly distinctive and that the Complainant had used it on-line for many years prior to its acquisition by the Respondent, it appears to the Panel that it is more likely than not that the Complainant, although based in Italy, was well aware of the Complainant’s mark and banking business at the date of its registration of the disputed domain name.
The Respondent has used the disputed domain name to resolve to a website that features pay-per-click links to other financial services businesses which the Complainant assets are competing businesses. The Panel finds that such use amounts to intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or sponsorship of the Respondent’s website under paragraph 4(b)(iv) of the Policy and this amounts to evidence of registration and use of the disputed domain name in bad faith. The Panel’s view in this regard is only reinforced by the Respondent’s use of a privacy service in an attempt to hide its real identity.
As a result, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and that the Complaint also succeeds under this 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.
Alistair Payne
Sole Panelist
Date: June 27, 2019
Full & Egal Universal Law Academy