The Complainant is Amegy Bank National Association of Houston, Texas, United States of America (the “US”), represented by Callister Nebeker & McCullough, US.
The Respondent is X. Lei Wang of Miami, Florida, US.
The disputed domain name <amegyban.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2013. On February 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2013, 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. On February 11, 2013, the Center received an email communication from the Complainant, amending the Annexes to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on March 12, 2013.
The Center appointed Dennis A. Foster as the sole panelist in this matter on March 19, 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.
The Complainant is a United States of America company that offers banking and investment services under the service marks AMEGY BANK and AMEGYBANK, which the Complainant has registered with the United States Patent and Trademark Office (e.g., respectively, Registration No. 2,979,655, registered July 26, 2005; and Registration No. 3,105,196, registered June 13, 2006).
The disputed domain name <amegyban.com> is owned by the Respondent, who registered the name on January 2, 2013. The disputed domain name is connected to a website that offers linkage to the websites of third parties that offer banking-related services.
- The Complainant is the owner of the service marks, AMEGY BANK and AMEGYBANK, which are registered with the United States Patent and Trademark Office (“USPTO”). The marks have been used in commerce since at least early 2005 by the Complainant in connection with its banking and investment services. In 2003, the Complainant registered the domain name <amegybank.com> to assist in advertising and offering its banking services.
- The disputed domain name <amegyban.com> incorporates the dominant portion of the Complainant’s service marks. The disputed domain name is confusingly similar to both marks, dropping only the final letter “k”.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has obtained from the Complainant no license or authorization to use its service marks.
- The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but instead employs the name to offer banking-related search inquires that may divert Internet users seeking to access the Complainant’s services to competing third party websites. Moreover, such usage may tarnish the Complainant’s marks.
- The disputed domain name was registered and is being used in bad faith. The Respondent uses the name, which is confusingly similar to the Complainant’s service marks, to display one of those marks and to divert the Complainant’s customers from the Complainant’s website to the Respondent’s website. Furthermore, the Respondent uses the disputed domain name to intentionally create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant may prevail in these proceedings provided that the Complainant can demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
By providing appropriate evidence (Complaint, Annex 4) of its registrations with the USPTO, the Complainant has persuaded the Panel that the Complainant has the requisite rights in the service marks AMERGY BANK and AMERGYBANK for the purposes of Policy subparagraph 4(a)(i). See, Lilly ICOS LLC v. Andrew Riegel, WIPO Case No. D2006-1088 (“The Panel finds that the Complainant’s registration with the USPTO sufficiently establishes the Complainant’s rights in the CIALIS mark.”); and Vivendi Universal Games and Davidson & Associates, Inc. v. XBNetVentures Inc., NAF Claim No. 198803 (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
In evaluating the Complainant’s two service marks with respect to domain name comparisons, the Panel deems the space found between the two terms of the mark, AMERGY BANK, to be irrelevant, so that the two marks are functionally equivalent to each other. Thus, in comparing the marks to the disputed domain name, <amergyban.com>, the Panel concludes, in agreement with the Complainant, that the only difference is the deletion of the ending letter “k” in the name – the inclusion of the “.com” suffix being irrelevant for such comparison purposes. The Panel finds that that minor difference certainly fails to negate a finding that the disputed domain name is confusingly similar to the Complainant’s marks. See, Amegy Bank National Association v. Contact Privacy Inc. / ICS INC., WIPO Case No. D2012-2018 (where the domain name, <amegyband.com>, was found to be confusingly similar to both the AMEGY BANK and AMERGYBANK marks); Migros-Genossenschafts-Bund v. ubgm, WIPO Case No. DCH2008-0016 (finding <migrosban.ch> to be confusing similar to the MIGROSBANK mark); and Wecosign, Inc. v. Jackson-Wright, WIPO Case No. D2010-0285 (“…it is well established in many panel decisions that suffixes such as “.com”, “.org”, or “.net” should not be taken into account when considering the issue of whether a domain name is identical or confusingly similar to a trademark.”).
Ergo, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant owns rights.
The consensus of prior Policy decisions is that the Complainant must make at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name before the burden shifts to the Respondent to sustain its claim to such rights or interests. See Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.“); and G.D. Searle & Co. v. Fred Pelham, NAF Claim No. 117911 (“Complainant has presented a prima facie case against Respondent and as a result shifts the burden to Respondent to establish that it does have rights and legitimate interests in the disputed domain name.”).
In this case, the Complaint has demonstrated successfully that the disputed domain name is confusingly similar to the Complainant’s service marks. Moreover, the Complainant contends that it has granted no license or authority to the Respondent allowing use of either or both of those marks. As such, the Complainant has established said prima facie case.
The Respondent has filed no Response, and thus the Panel will accept all of the Complainant’s reasonable contentions as valid in determining whether there is any possible evidence in the record that might serve as an effective rebuttal to the Complainant’s prima facie case. Paragraph 4(c) of the Policy sets forth three avenues through which the record might assist the Respondent in meeting its obligation of rebuttal. However, there is no indication at all in the record that the Respondent, X. Lei Wang, is commonly known as the disputed domain name, <amegyban.com>, or that the Respondent owns a company with such a name, so subparagraph 4(c)(ii) is inapplicable. Moreover, as the Panel accepts the Complainants reasonable, and not contradicted, contention that the Respondent uses the disputed domain name solely to host a website that provides linkage to banking-related websites of third party competitors of the Complainant, the Panel concludes that subparagraphs 4(c)(i) and (iii) are not applicable to this case as well. See, Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404 (“It is well-established that operating a link farm 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.”); and Computer Doctor Franchise Systems, Inc. v. The Computer Doctor, NAF Claim No. 95396 (“The Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names. The Respondent is not using the domain names in connection with a bona fide offering of goods and services nor for a legitimate noncommercial purpose. Policy [paragraphs] 4.c.(i), (iii).”).
Since there has been no effective rebuttal to the Complainant’s prima facie case, the Panel rules that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name.
In guiding the Panel, the Policy, in paragraph 4(b)(iv), sets forth a circumstance that suggests bad faith registration and use of a disputed domain name as follows: by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
In this case, the Complainant has failed to contend explicitly that the Respondent profits commercially from diverting Internet traffic to its website due to the likelihood of confusion between the Complainant’s service marks and the confusingly similar disputed domain name. However, the Panel is cognizant that cyber-squatters commonly intend to garner pay-per-click fees in connection with the third party website-links placed on their websites and, in light of the Respondent’s failure to respond in this case, will reasonably ascribe that common intention to the Respondent. As a result, the Panel concludes that the Respondent has intentionally used the disputed domain name for illicit commercial gain and has thus registered and used the disputed domain name in bad faith per the circumstance delineated in Policy subparagraph 4(b)(iv). For example, see Higher Education Loan Authority of the State of Missouri v. Kanter Associates SA, WIPO Case No. D2012-2354 (“The Panel finds bad faith under Policy paragraph 4(b)(iv). Respondent’s site contains links to commercial sites of third parties, some of whom compete with Complainant. It is fair to infer that Respondent derives financial gain via click-through revenues.”); Bank of American Fork v. Jinyang Shen, NAF Claim No. 699645 (“Respondent’s previous use of the Domain Name to attract consumers looking for Complainant’s banking services to a commercial web directory featuring links to content unrelated to Complainant is evidence of bad faith because Respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third party websites.”); and Caesars Entertainment, Inc. v. Infomax, Ltd., WIPO Case No. D2005-0032 (“The Panel is satisfied that the Respondent is intentionally using the Domain Name to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known mark, and that the Respondent gains commercially from such confusion by receiving ‘click-through’ commissions. This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.”)
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name was registered and is being used 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 <amegyban.com> be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: April 2, 2013