WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A., a national banking association, dba Amegy Bank v. Whois Agent, Domain Whois Privacy Protection Service, Inc. / Domain Vault LLC
Case No. D2017-0170
1. The Parties
Complainant is ZB, N.A., a national banking association, dba Amegy Bank of Salt Lake City, Utah, United States of America ("United States") (hereinafter "Complainant"), represented by John Rees Law, PLLC, United States.
Respondent is Whois Agent, Domain Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Domain Vault LLC of Dallas, Texas, United States (hereinafter "Respondent").
2. The Domain Name and Registrar
The disputed domain name <amergybank.com> is registered with Name.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2017, 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 Complainant on January 31, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 3, 2017. The original Complaint together with the later-filed Amendment will hereinafter be referred to as "the Complaint."
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on February 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 6, 2017.
The Center appointed M. Scott Donahey as the sole panelist in this matter on March 20, 2017. 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
On August 18, 2003, Complainant's parent registered the domain names <amegy.com> and <amegybank.com> (Complaint, Annex 5).
On December 8, 2003, Complainant filed an application for the service mark AMEGY BANK with the United States Patent and Trademark Office (the "USPTO") for, among others, banking services. On January 5, 2005, Complainant filed with the USPTO an application for the service marks AMEGY BANK and AMEGY BANK (stylized). All three applications showed a first use in commerce of January 26, 2005. All applications for registrations later issued (Complaint, Annex 4). Complainant has been using the issued trademarks and the registered domain names in the operation of its national banking business.
On March 25, 2005 Respondent registered the disputed domain name. The disputed domain name is being used to resolve to a web site which has all the indicia of a pay-per-click web site. At the top of the page to which the disputed domain name resolves the disputed domain name <amergybank.com> appears. That is the only reference to the disputed domain name on the site. Thereafter links to banking services appear, including links to "Amegy Bank Login," "Amegy Bank," and "Amegy Bank Personal" (Complaint, Annex 6).
A user who clicks on any of the links is taken to a laundry list of Complainant's competitors.
5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to the fanciful trademarks used and registered by Complainant, in that the disputed domain name differs only in the insertion of the letter "r" within the fanciful word mark Complainant had adopted. Complainant avers that it has neither licensed, nor in any way sanctioned the use of its trademarks by Respondent. Complainant asserts that Respondent registered and is using the disputed domain name in bad faith in that Respondent is using the disputed domain name to resolve to a pay per click web site whose links include Complainant's registered trademarks and whose links take a user to lists of banking services offered by Respondent's competitors.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name differs from Complainant's fanciful mark only by the assertion of the letter "r" within the mark. The fact that it is being used to resolve to a web site which features links which consist of or incorporate Complainant's marks further establish that the disputed domain name is confusingly similar to Complainant's registered trademarks. Therefore, the Panel finds that the disputed domain name is confusingly similar to Respondent's registered trademarks.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview, 2.0"), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Respondent registered the confusingly similar domain name at issue after Complainant's parent had registered domain names incorporating Complainant's marks, after Complainant had begun using the trademarks in commerce, and within a few months after Complainant had filed three trademark registrations with the USPTO.
Moreover, Respondent used the disputed domain name to resolve to a pay-per-click web site which featured links which incorporated Complainant's trademarks and links which resolved to lists of services offered by competitors of Complainant. Accordingly, the Panel finds that Respondent has 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 <amergybank.com> be transferred to Complainant.
M. Scott Donahey
Date: March 20, 2017