WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Amegy Bank National Association v. Wolfgang Moecklin / Whois Agent, Whois Privacy Protection Service, Inc.

Case No. D2014-1661

1. The Parties

The Complainant is Amegy Bank National Association of Salt Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America.

The Respondents are Wolfgang Moecklin of Baden-Wuerttemberg, Germany / Whois Agent of Kirkland, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <amogy.com> is registered with Name.com LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2014. On September 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2014, 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 29, 2014 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 30, 2014.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2014. The Response was filed with the Center on October 21, 2014.

The Center appointed James A. Barker as the sole panelist in this matter on October 28, 2014. 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 the owner of marks registered with the United States Patent and Trademark Office for AMEGY BANK and a stylized mark for AMEGYBANK, registered in 2005 and 2006, respectively. These marks are registered for banking services and investment services", among other things.

Although the Complainant in this case provided no direct evidence of its business, past decisions under the Policy have recognized that the Complainant's trademarks have been used extensively in the banking sector.See Amegy Bank National Association v. ICS INC. / PrivacyProtect.org, WIPO Case No. D2013-1006.

The disputed domain name was first created in September 2014, according to the WhoIs details. In the Registrar's confirmation of the registration details, however, the Registrar stated that the date of the registration of the disputed domain name to the Respondent "cannot be confirmed".

5. Parties' Contentions

A. Complainant

The Complainant says that the disputed domain name is confusingly similar or identical to the dominant part of the Complainant's registered mark.

The Complainant also says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not licensed or otherwise authorized to use the Complainant's mark. The website associated with the disputed domain name is not active.

Lastly, the Complainant says that the disputed domain name was registered and has been used in bad faith. The use of an identical or confusingly similar mark in the disputed domain name indicates that it was registered primarily for the purpose of disrupting the business of the Complainant and taking advantage of the Complainant's mark.

The Complainant refers to prior cases under the Policy where it says it prevailed for domain names similar to the disputed domain name.

B. Respondent

The Respondent denies the allegations in the Complaint.

The Respondent says that the disputed domain name is not confusingly similar to the Complainant's mark. In short names or trademarks, especially those of equal or less than five letters, a one letter difference is significant. The Respondent also says that customers of banks would not be misled, because they would be especially attentive to such differences. The Respondent denies that the term "amogy" is a typo for "amegy", and says these are visually and phonetically different.

The Respondent says that it has rights or legitimate interests in the disputed domain name. The Respondent suggests that it has not had time to start using the disputed domain name in connection with a bona fide offering of goods or services, and also for that reason cannot reveal the exact way that it plans to use the disputed domain name. The Respondent explains that it registered the disputed domain name "because of it's [sic] beautiful affinity to love". The Respondent says that it has registered other domain names in this connection, including <lovenews.org> and <lovgy.com>.

The Respondent denies that it registered and has used the disputed domain name in bad faith. The Respondent says that it is not active in the field of banking or financial services, and denies that it was aware of the Complainant's marks when it registered the disputed domain name. The Respondent says that this case is different to the past cases referenced by the Complainant because the disputed domain name is short and is not an example of typosquatting.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove 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 was registered and is being used in bad faith.

The Complainant and Respondent provided almost no evidence to support the limited contentions they made.

In the face of this lack of evidence, the Panel has undertaken limited independent research. The Panel has made that investigation in accordance with paragraph 10 of the Rules. Such an approach is consistent with a majority of panel views about the capacity of a panel to undertake independent research (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5). However, evidence obtained in that way can obviously suffer from a lack of explanation which a party's submission might give it. As such, the Panel has undertaken this research only to the extent necessary to clarify matters on which both the Complainant and Response were silent, and on matters which appear unlikely to be disputed.

A. Identical or Confusingly Similar

The Complainant provided evidence of its registered mark for AMEGY BANK and a relevantly similar stylized mark.

The Complainant has not, however, shown that the disputed domain name is confusingly similar to the "AMEGY" component of this mark. While the Complainant made this claim, it provided little argument to support it.

The starting point for this consideration is laid out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO overview 2.0"), paragraph 1.2.: "The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms… typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusingly similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name."

The Panel does not consider that the Complainant's trademark is recognizable in the disputed domain name for the following reasons:

Firstly, the Complainant's mark is for AMEGY BANK. The disputed domain name does not replicate this mark as a whole or an obvious variant of it.

Secondly, the Complainant argues that the dominant element of its mark is AMEGY and that the disputed domain name is confusingly similar with this element. The Panel can accept that the term AMEGY is relatively distinctive when compared to the generic word "bank", because the former term appears to be arbitrary (although neither party provided direct evidence on this issue). The Complainant's mark also disclaims any rights in the word "bank". But this does not mean that the term "bank" can be ignored. This term features prominently in the Complainant's mark. That mark includes only two terms – "amegy" and "bank". The Complainant does not have a mark for the term "amegy" standing alone. It is the Complainant itself that has decided to register the term "bank" in its mark. In this context, the Panel considers that the omission of a single word from a two word mark is significant.

Thirdly, the term "amegy" is not self-evidently similar to "amogy". While the textual difference is only one letter, that change is sufficient to create a potential phonetic difference. As the term is relatively short, the visual difference is also relatively more significant.

Fourthly, the Complainant provided no evidence of the derivation of the term "amegy". It is not clear from the case file whether that term has a distinctive association with the Complainant.

Finally, the Complainant provided no evidence of any factual evidence of confusion. The Panel notes that a simple Google search for "amegy" provides results relating to the Complainant. A search for "amogy" provides very different results, none of which relate to the Complainant.

In reaching this conclusion, the Panel has had regard to the past decisions referenced in the Complaint, decided in the Complainant's favor. These were:

- Amegy Bank National Association v. ICS INC. / PrivacyProtect.org, WIPO Case No. D2013-1006 involved the domain name <mamegybank.com>.

- Amegy Bank National Association v. ICS Inc. / Contact Privacy Inc., WIPO Case No. D2013-0799 involved the disputed domain name <amegebank.com>.

- Amegy Bank National Association v. Contact Privacy Inc./ICS INC, WIPO Case No. D2013 -0684 involved the domain name <amegybaank.com>.

- Amegy Bank National Association v. X. Lei Wang, WIPO Case No. D2013-0255 involved the disputed domain name <amegyban.com>.

- Amegy Bank National Association v. ICS Inc. / Contact Privacy Inc., WIPO Case No. D2012- 0248 involved the domain name <wwwamegy.com>.

The Complainant claimed that these cases are relevantly similar to this case. The Complainant gave no explanation for this claim. The Panel considers that none of these cases provide much support to the Complainant for the following reasons:

None of these cases were contested by the various respondents. As noted by the Panel in the first of these cases, "where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts." That Panel considered it appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the respondent. Unlike those cases, this one is contested.

It is also notable that the first four of these cases included the term "bank" or an apparent variant on that term, together with the Complainant's mark exactly, or a slight and phonetically identical variant ("amege"). The last case simply included the term "amegy" exactly, with only the addition of "www" as the obvious reference for the world wide web. The facts of the present case are different. The term "bank" or a variant on that term is not included in the disputed domain name. The disputed domain name does not wholly include the word "amegy".

The Panel has also had regard to other cases (although not cited in the Complaint) that concerned the Complainant's mark. Most recently, the case of Amegy Bank National Association v. Contact Privacy Inc. Customer 0136596179 / Banks Joseph, WIPO Case No. D2014-0983 concerned the domain name <amegey.com>. That case appears to the Panel to be more analogous to the case at hand than those cited by the Complainant. It involved the addition of the single letter "e" to the Complainant's mark, and the omission of the word "bank". The then Panel did not consider these differences significant.

As to the omission of the word "bank" in this case, this Panel does not consider that the omission of this word can be so easily disregarded, for the reasons set out above. The Panel also considers that the addition of the letter "e" in that case did not change the phonetic similarity with the Complainant's mark and, as such, did not affect the overall impression of a similarity with the dominant element of the Complainant's mark. Although this case also involves a single letter change (the letter "o"), that change creates a potential phonetic difference with the "AMEGY" element of the Complainant's mark, and arguably a more significant visual difference.

The Panel admits that it is possible that the Respondent registered the disputed domain name with the intention of creating confusion. In this respect, the vague and evasive Response (addressed further below) does not reflect well on the Respondent. But having an intention to confuse does not mean that this intention was successfully realised.

For these reasons, the Panel finds that the Complainant has not established this first element.

B. Rights or Legitimate Interests

Because of the Panel's finding above, it is not strictly necessary for the Panel to also make a finding on this ground.

But for completeness, the Panel considers that the Complainant's argument on this ground would also not succeed. The obligation on the Complainant under this ground is to establish a prima facie case. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.) The entirety of the Complainant's argument is, in effect, that the Respondent has used its mark without authorization. For the reasons set out above, it is not self-evident that the Respondent has done so.

It is true that the Respondent did not provide a particularly compelling case in reply. The Respondent admitted that it could provide no clear explanation of its intended use for the disputed domain name. The Respondent averred vaguely of an intention to use its "affinity to love". The Panel does not see any obvious affinity in this respect, and the Respondent did not illustrate it.

Regardless, the burden is on the Complainant to make out its case. The Complaint essentially only reiterated its trademark rights and stated that the Respondent was not licensed by it. Given the lack of obvious confusing similarity between the Complainant's mark and the disputed domain name, the Panel considers the bare assertions in the Complaint to be insufficient to establish a prima facie case.

C. Registered and Used in Bad Faith

It is also unnecessary for the Panel to make a finding on this ground.

But, again for completeness, the Panel would find that the Complainant has not established this ground, either. The Complainant provided no evidence of its reputation which might suggest that the Respondent was aware of its mark. The disputed domain name is not so obviously similar to the Complainant's mark that a bad faith intention can easily be inferred.

The Respondent provided very little counter-argument on this ground, or convincing explanation for its registration. The evasion in the Response might suggest the possibility of bad faith. However, the obligation on the Complainant is to establish its case on the balance of probabilities. For the reasons set out above, and the limited evidence in the case file, the Panel considers that there is insufficient evidence in the case file for an inference of this kind.

7. Decision

For the foregoing reasons, the Complaint is denied.

James A. Barker
Sole Panelist
Date: November 11, 2014