WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amegy Bank National Association v. Contact Privacy INC./ICS INC.
Case No. D2013-0684
1. The Parties
The Complainant is Amegy Bank National Association of Houston, Texas, United States of America (“USA”), represented by Callister Nebeker & McCullough, USA.
The Respondent is Contact Privacy INC. of Toronto, Ontario, Canada / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territories of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The Disputed Domain Name <amegybaank.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2013. On April 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 12, 2013, 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 April 17, 2013 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 amended Complaint on April 22, 2013.
The Center verified that the Complaint together with the amended 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 April 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2013.
The Center appointed Charné Le Roux as the sole panelist in this matter on May 28, 2013. 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 a USA banking association having Zions Bancorporation as its parent company. The Complainant owns the trade mark AMEGY BANK, which is incorporated in its trading name and which the Complainant registered at the United States Patent and Trademark Office (“USPTO”) in different formats in connection with banking services, financial services and related services in class 36, in July 2005 and June 2006 respectively. The Complainant also registered the domain name <amegybank.com> in 2003, although its parent company is reflected as the current registrant for this domain name. The website at “www.amegybank.com” is the homepage of the Complainant from which it advertises and offers its banking services. The Complainant has used its AMEGY BANK trade mark in commerce since 2005.
The Disputed Domain Name was registered by the Respondent on March 11, 2013 using the privacy services of Contact Privacy Inc. The website associated with the Disputed Domain Name redirects to a website featuring sponsored links relating to Internet banking, stockbroking and related financial topics.
5. Parties’ Contentions
The Complainant provided evidence confirming its registration of the trade mark AMEGY BANK at the USPTO, in different formats for various financial services in class 36, in July 2005 and June 2006 respectively. The Complainant asserts that it has been using its AMEGY BANK trade mark since 2005. The Complainant also asserts that it registered the domain name <amegybank.com> in 2003 and that it uses the website attached to this domain name as its homepage from which it advertises and offers its banking services.
The Complainant contends that the Disputed Domain Name is confusingly similar to a trade mark in which it holds rights. It points out that the Disputed Domain Name incorporates the dominant portion of the Complainant’s registered mark and that the only difference between the Disputed Domain Name and the Complainant’s trade mark AMEGY BANK is the addition of the letter “a” in the word “bank”.
The Complainant submits that the Respondent lacks rights and legitimate interest in the Disputed Domain Name in that:
the Respondent acquired the Disputed Domain Name in March 2013, much later than the Complainant’s registration of its trade mark AMEGY BANK in 2005 and 2006;
the Respondent is not a licensee of the Complainant and has no authorization to use the Complainant’s mark;
the Respondent is not using the Disputed Domain Name as part of a bona fide offering of goods and services. Instead, the Respondent is using the Disputed Domain Name to direct to various banking related links that turn consumers to the websites of third parties;
the use of the Complainant’s mark in the Disputed Domain Name and on the Respondent’s website is misleading and may divert consumers to this website instead of the Complainant’s official website. On this premise, the Respondent’s website, being misleading, can be used in connection with various phishing and fraudulent activities; and
the Respondent’s use of the Complainant’s mark may tarnish the Complainant’s mark.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. It contends that the Respondent clearly registered the Disputed Domain Name with an intention to create a likelihood of confusion with the Complainant’s mark and as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. It contends that the Respondent also displayed the Complainant’s mark on the website associated with the Disputed Domain Name. No evidence in this respect was provided, however. The Complainant also contends that because the Disputed Domain Name is hardly distinguishable from the Complainant’s registered mark, and the website attached to the Disputed Domain Name provides links to various banking related search queries, identifying services that are similar to the services offered by the Complainant, it is clear that the Respondent is trying to divert customers of the Complainant from the Complainant’s website to the Respondent’s website.
The Complainant requests that the Disputed Domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove:
(i) That the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That the Disputed Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it has acquired rights in the AMEGY BANK trade mark by virtue of its portfolio of trade mark registrations for it, coupled with its <amegybank.com> domain name registration and use of the AMEGY BANK mark and related domain name for at least 8 years.
The Panel finds that, save for the misspelling in the Disputed Domain Name by the addition of the letter “a” to the term “bank”, the Disputed Domain Name would have been identical to the registered trade mark of the Complainant and, as such, will suffice for the purposes of finding that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights.
The Complainant has satisfied this Policy requirement.
C. Rights or Legitimate Interests
The Complainant asserts that it has not granted the Respondent any rights in respect of the Disputed Domain Name, that the Respondent registered the Disputed Domain Name well after the Complainant registered its trade mark and commenced use of it in commerce, and that the Respondent has not used the Disputed Domain Name as part of a bona fide offering of goods and services.
The Panel finds that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer.
The Respondent has not disputed any of the claims made by the Complainant and has not provided any answer. Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.
D. Registered and Used in Bad Faith
There is little doubt that the Respondent registered the Disputed Domain Name primarily with the intention to capitalize on the attractive force attached to the Complainant’s mark, in order to divert Internet users seeking information about the Complainant to the Respondent’s website.
The use that the Respondent has made of the Disputed Domain Name subsequent to its registration corresponds with its intention at registration. Although the Complainant did not provide evidence to show the manner in which the Respondent is using the Disputed Domain Name, the Panel itself conducted Internet searches (as it is entitled to) which confirmed that the website attached to the Disputed Domain Name redirects to a website that references various banking terms as sponsored links.
The Panel is thus satisfied that the Respondent is intentionally creating the likelihood of confusion with the Complainant’s mark as the source, sponsorship, affiliation or endorsement of the Respondent’s website in order to attract commercial gain through the sponsored links that appear on this website.
The Panel notes that the Respondent’s conduct in this matter corresponds with its conduct in a large number of prior proceedings under the Policy, where the Respondent was found by other panels to have registered third party trade marks as domain names with the intention of exploiting the goodwill associated with these trade marks (e.g. Amegy Bank National Association v. Contact Privacy Inc. / ICS INC., WIPO Case No. D2012-2018; Amegy Bank National Association v. ICS INC. / Contact Privacy Inc., WIPO Case No. D2012-0248). The Respondent did not, in those proceedings either, file any response. The Complainant has not sought to make out a case in terms of paragraph 4(b)(ii) of the Policy and so this point will not be taken further.
In reaching a decision on this third Policy requirement, the Panel is mindful of the fact that the Respondent had an opportunity in this administrative proceeding to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainant’s contentions. However, it elected not to take up these opportunities.
The Panel is satisfied, on all the basis of the evidence before it, that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) and of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <amegybaank.com> be transferred to the Complainant.
Charné Le Roux
Date: June 11, 2013