WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A., dba Amegy Bank v. Hypotax Unitype
Case No. D2016-0935
1. The Parties
The Complainant is ZB, N.A., dba Amegy Bank of Salt Lake City, Utah, United States of America ("United States"), represented by Callister Nebeker & McCullough of Salt Lake City, Utah, United States.
The Respondent is Hypotax Unitype of San Diego, California, United States.
2. The Domain Name and Registrar
The disputed domain name <amegyny.com> (the "Disputed Domain Name") is registered with Register.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2016. On May 11, 2016, 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 confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 7, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 10, 2016. 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 United States bank that owns several United States trademark registrations. The Complainant owns a trademark for AMEGY for, among other things, banking services, online banking and investment services, which it has been using in commerce since January 26, 2005, and obtained federal registration for the trademark on July 24, 2007. The Complainant also owns trademark registrations for AMEGY BANK and AMEGYBANK (stylized).1 Together, the AMEGY, AMEGY BANK and AMEGYBANK trademarks are heretofore referred to as the "AMEGY Mark".
On August 18, 2003, the Zions Bancorporation, parent of the Complainant, registered the domain names <amegy.com>2 and <amegybank.com>, from which the Complainant advertises and offers its banking services.
The Respondent registered the Disputed Domain Name on April 8, 2016, a decade after the Complainant began to use the AMEGY Mark. The Disputed Domain Name does not resolve to any website.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(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.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the AMEGY Mark based on both longstanding use as well as its several trademark registrations. The Disputed Domain Name consists of the AMEGY Mark appended by the descriptive letters "ny", which may be understood to be the abbreviation for New York, and followed by the generic Top-Level Domain ("gTLD") ".com".
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Weight Watchers International, Inc. v. Kevin Anthony, WIPO Case No. D2011-2067.
The addition of a gTLD such as ".com" in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Finally, it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy. See Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. There is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its AMEGY Mark. There is no evidence that the Respondent is commonly known by the Disputed Domain Name, nor does the Complainant have any type of business relationship with the Respondent. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the registration of a domain name that is confusingly similar to a registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107 and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant's AMEGY Mark.
Second, the Respondent's action of registering the Disputed Domain Name evidences a clear intent to disrupt the Complainant's business by attracting Internet users to the Disputed Domain Name by creating a likelihood of confusion with the Complainant's AMEGY Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name. The Respondent's registration and use of the Disputed Domain Name indicates that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its AMEGY Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy").
Third, the Respondent knew or should have known of the Complainant's rights in its AMEGY Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name more than a decade after the Complainant first used and obtained its trademark registrations for the AMEGY Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its AMEGY Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name).
Finally, the Complainant has filed numerous UDRP complaints involving the improper registration of a domain name containing its AMEGY Mark. In those cases, UDRP panels consistently found bad faith registration and use of the domain names and ordered a transfer of the domain names to the Complainant.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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, <amegyny.com>, be transferred to the Complainant.
Lynda M. Braun
Date: June 12, 2016
1 The Complainant has been using its AMEGY BANK trademark in commerce since January 26, 2005, and obtained federal registration for such trademark on July 26, 2005. The Complainant has been using its AMEGYBANK trademark in commerce since January 26, 2005, and obtained federal registration for such trademark on June 13, 2006.
2 When one clicks on the domain name <amegy.com>, the user is redirected to the website "www.amegybank.com".