WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amegy Bank National Association v. ICS INC. / PrivacyProtect.org
Case No. D2013-1006
1. The Parties
The Complainant is Amegy Bank National Association of Houston, Texas, United States of America, represented by Callister Nebeker & McCullough, United States of America.
The Respondents are ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, and PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <mamegybank.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2013. On June 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 June 7, 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 June 12, 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 June 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2013.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on July 10, 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 the owner of the following trademarks registered with the United States Patent and Trademark Office: AMEGY BANK, Registration No. 2,979,655 on July 26, 2005, and AMEGYBANK (Stylized), Registration No. 3,105,196 on June 13, 2006.
These registered marks are in use by the Complainant and are registered for “banking services” and other related activities.
The Complainant is a subsidiary of Zions Bancorporation. Amegy Bank registered the domain name <amegybank.com> on August 18, 2003, and its parent, Zions Bancorporation, is the current registrant of the domain name. <amegybank.com> is the home page of the Complainant from which it advertises and offers its banking services.
The disputed domain name was registered on February 4, 2013.
5. Parties’ Contentions
The Complainant is the owner of the AMEGY BANK and AMEGYBANK trademarks. The disputed domain name incorporates the dominant portion of the Complainant’s registered marks and is otherwise confusingly similar to these registered marks. In fact, the disputed domain name has only added the letter “m” to the beginning of the word “amegy” to be identical or virtually identical to the registered marks of Complainant.
The Respondent is not a licensee of the Complainant’s trademarks, and has not otherwise obtained authorization to use the Complainant’s marks.
The Respondent is not using the disputed domain name as part of a bona fide offering of goods or services. Instead, the Respondent appears to be using the disputed domain name to provide various banking-related search queries that direct consumers to the websites of third parties. The use of the Complainant’s marks 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 and authorized website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a complainant under the Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
Thus where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques., WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432). Here, since the Respondent has defaulted, it is appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent.
A. Identical or Confusingly Similar
The Complainant has made continuous use of its registered and incontestable marks where AMEGY appears to be a distinctive element and has spent much time, money and effort promoting the mark and has established significant good will.
Previous UDRP panels have decided that “essential” or “virtual” indentity is sufficient to meet the first element (La Caixa D'Estalvis I Pensions de Barcelona v. Molina Georgesen, WIPO Case No. D2006-1615). In the present case, the addition of the preffix “m” to the disputed domain name is not sufficient to distinguish the disputed domain name. Therefore, the Panel is prepared to accept the submission of the Complaint that the addition of the preffix “m” to the Complaint’s trademarks to form the disputed domain name <mamegybank.com> is insignificant and consequently the disputed domain name is confusingly similar to the Complaint’s trademark.
Besides, 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 [regarding the latter see further paragraph 1.3 below] 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 therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances brought forward by the Complainant: the Respondent is not a licensee of the Complainant’s trademarks and have not otherwise obtained authorization to use the Complainant’s marks. Besides, the Respondent is not using the disputed domain name as part of a bona fide offering of goods or services.
Further, the Respondent does not appear to be the owner of any trademark registration for the disputed domain name nor to be commonly known as “mamegybank.com”.
The Respondent has used the disputed domain name in connection with a link parking page advertising the services of third parties in competition with the Complainant. It is well-established that operating a link parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests. See, e.g., VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925. This has been checked by the Panel in order to verify the Complainant’s contentions.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the disputed domain name in bad faith. By not submitting a response, the Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the disputed domain name in bad faith.
The Complainant has also established that its trademarks have been used extensively in the banking sector. Thus, the Panel considers that the clear inference to be drawn is that the Respondent registered and used the disputed domain name <mamegybank.com> for the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. Indeed, when directing Internet users to a link parking page offering goods and services competitive with those of the Complainant the only imaginable purpose was to obtain commercial gain by creating Internet user confusion through suggesting source, sponsorship, affiliation or endorsement by the Complainant of the Respondent’s website and this constitutes bad faith registration and use of the disputed domain name.
Upon the above mentioned, the Complainant has established the third and final element necessary for a finding that the Respondent registered and is using the disputed domain name in bad faith.
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, <mamegybank.com>, be transferred to the Complainant.
Date: July 22, 2013