WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amegy Bank National Association v. Damon Nelson - Manager, Quantec, LLC/Novo Point, LLC
Case No. D2015-0269
1. The Parties
Complainant is Amegy Bank National Association of Houston, Texas, United States of America ("United States"), represented by Callister Nebeker & McCullough, United States.
Respondent is Damon Nelson - Manager, Quantec, LLC/Novo Point, LLC of Dallas, Texas, United States.
2. The Domain Name and Registrar
The Disputed Domain Name <amegyback.com> ("Disputed Domain Name") is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 19, 2015. On February 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2015. The Center received an email communication from Respondent on February 24, 2015. Respondent did not file a formal response.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 23, 2015. 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
Complainant states that it is "a subsidiary of Zions Bancorporation"; that it is the owner of the trademarks AMEGY and AMEGY BANK (as further discussed below); and that it is the registrant of the domain name <amegybank.com>, which was created on August 18, 2003.
Complainant states, and provides evidence to support, that it is the owner of the following trademark registrations (the "AMEGY Trademark"):
- U.S. Reg. No. 3,269,288 for AMEGY (registered July 24, 2007) for use in connection with, inter alia, "[b]anking services."
- U.S. Reg. No. 2,979,655 for AMEGY BANK (registered July 26, 2005) for use in connection with, inter alia, "[b]anking services."
- U.S. Reg. No. 3,105,196 for AMEGYBANK (stylized) (registered June 13, 2006) for use in connection with, inter alia, "[b]anking services."
Complainant states that it previously filed a complaint under the Policy regarding the Disputed Domain Name ( WIPO Case No. D2014-2270), which complaint was terminated after Complainant's counsel received an email from an unidentified author who "stated that he or she was counsel for Quantec LLC with respect to the disputed domain name and offered to sell the disputed domain name." Complainant provides further information regarding this previous proceeding, including information about a receivership and other litigation.
The Disputed Domain Name was created on November 15, 2005; and is being used in connection with a website that contains the text "The Best Place To Find Amegy Bank," along with a search box.
5. Parties' Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because "[t]he dominant part of the Domain Name is identical to Complainant's registered mark AMEGY, and is virtually identical to Complainant's registered marks AMEGY BANK, and AMEGYBANK (Stylized) , and is otherwise confusingly similar to these registered marks. In fact, the Disputed Domain Name has only changed the letter 'n' to the letter 'c' in the word 'bank', which does not act to distinguish the Disputed Domain Name from Complainant's registered marks. Further, the Disputed Domain Name is identical to AMEGY and the dominant part of AMEGY BANK and AMEGYBANK.COM, except for the letter 'n' instead of the 'c' in BANK. This appears to be an effort to take advantage of users seeking to find <amegybank.com>, and the services offered at that site, but who mistakenly type the domain name with one extra letter."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because "Respondent is not a licensee of Complainant's trademarks, and has not otherwise obtained authorization to use Complainant's marks" and "Respondent is not using the Disputed Domain Name as part of a bona fide offering of goods or services, or for a legitimate [noncommercial] use, even if the Disputed Domain Name is simply parked."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, "[t]he use of identical or similar marks in the Domain Name indicates that the Domain Name was registered primarily for the purpose of disrupting the business of Complainant, and appears to be intended to take advantage of the goodwill associate with Complainant's federally registered trademark"; "Respondent [is] clearly trying to divert customers of Complainant from Complainant's website to Respondent's website by using the dominant portion of Complainant's marks in the Domain Name and on Respondent's website"; and "Respondent is clearly trying to attract customers of Complainant from Complainant's website to Respondent's website for commercial gain by creating a likelihood of confusion with Complainant's trademarks."
Respondent did not reply to Complainant's contentions. However, the Center received an email on February 24, 2015, from Respondent Damon Nelson, stating, "My position as court appointed manager of the portfolio of domain names controlled by the Receivership was vacated by the US District Court on 2/28/14. I no longer represent this domain name, or any other domain name assets in the Portfolio LLCs or the Receivership." The email referred the Center to two other people. In response, the Center sent an email on the same date, stating, in part: "[T]he UDRP Rules provide that the Respondent in a proceeding means the holder of a domain name-registration against which a Complaint is initiated."
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
A. Preliminary Issues
The complaint previously filed by Complainant with respect to the Disputed Domain Name ( WIPO Case No. D2014-2270) is irrelevant here because the previous case was terminated. As paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), makes clear, limitations on refiled cases under the Policy apply, if at all, only where "an earlier complaint […] had been denied."
As to the impact of the litigation to which Complainant refers, the Panel agrees with Complainant's reference to paragraph 4.14 of WIPO Overview 2.0, which states, "Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings." (Emphasis added.) That is, the Panel is not obligated to suspend, terminate or continue a UDRP proceeding. Here, given the absence of a request from Respondent to do so, as well as the uncertainty as to whether the referenced litigation is even "in respect of" the Disputed Domain Name (as required by paragraph 18(a) of the Rules), the Panel sees no reason not to proceed with the decision in this case.
Finally, the Panel finds the statement submitted by Respondent that he "no longer represent[s] this domain name," to be of no consequence, given that Respondent is, as verified by the Registrar following the Center's compliance check, the registrant of the Disputed Domain Name.
B. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the AMEGY Trademark. This is consistent with the previous decision under the Policy cited by Complainant, Amegy Bank National Association v. Domain Whois Protection Service, shangguoxiang, WIPO Case No. D2014-1516.
As to whether the Disputed Domain Name is identical or confusingly similar to the AMEGY Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., "amegyback"), as it is well-established that the generic Top-Level Domain (i.e., ".com") may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.").
This Panel agrees that the Disputed Domain Name is a form of "typosquatting" – that is, a typographical variation of the AMEGY Trademark – especially in light of the fact that the Disputed Domain Name is otherwise nonsensical and used in connection with a website that refers to Complainant.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
C. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because "Respondent is not a licensee of Complainant's trademarks, and has not otherwise obtained authorization to use Complainant's marks" and "Respondent is not using the Domain Name as part of a bona fide offering of goods or services, or for a legitimate [noncommercial] use, even if the Domain Name is simply parked."
Under the Policy, "a complainant is required to make out a 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 2.0, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.
D. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Here, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy because Respondent is using the Disputed Domain Name in connection with a website that contains the text "The Best Place To Find Amegy Bank," along with a search box. Such use of a domain name is akin to a monetized parking page, which numerous panels have found to constitute bad faith under the circumstances present in this case. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 <amegyback.com> be transferred to Complainant.
Douglas M. Isenberg
Date: April 6, 2015