national arbitration forum

 

DECISION

 

Amegy Bank National Association v. Lee Jaewan c/o Jaewan Lee

Claim Number: FA0911001294884

 

PARTIES

Complainant is Amegy Bank National Association (“Complainant”), represented by Alison Davis Frey, Texas, USA.  Respondent is Lee jaewan c/o Jaewan Lee (“Respondent”), South Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amegy-bank.com>, registered with Onlinenic, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2009.

 

On November 24, 2009, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <amegy-bank.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name.  Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 21, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@amegy-bank.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <amegy-bank.com> domain name is confusingly similar to Complainant’s AMEGYBANK mark.

 

2.      Respondent does not have any rights or legitimate interests in the <amegy-bank.com> domain name.

 

3.      Respondent registered and used the <amegy-bank.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Amegy Bank National Association, provides different banking services, such as small business banking, financial management and trust services, and retail and mortgage banking services.  Complainant operates over eighty locations in the state of Texas.  Complainant owns the <amegybank.com> domain name through which customers can conduct their banking.  Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMEGYBANK mark (e.g., Reg. No. 3,105,196 issued June 13, 2006).

 

Respondent registered the <amegy-bank.com> domain name on October 20, 2009.  The disputed domain name resolves to a directory website containing third-party hyperlinks, some of which resolve to websites in competition with Complainant and Complainant’s banking services. 

 

Respondent has been a respondent in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases.  See Zulunet, Inc. v. Lee Jaewan, D2001-0473 (WIPO July 16, 2001); see also Accor SoLuxury HMC v. Jaewan Lee, D2009-0574 (WIPO June 23, 2009).

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Respondent registered the <amegy-bank.com> domain name on October 20, 2009.

Complainant contends it has established rights in the AMEGYBANK mark.  Complainant holds multiple trademark registrations of the AMEGYBANK mark with the USPTO (e.g., Reg. No. 3,105,196 issued June 13, 2006).  The Panel finds trademark registration with a federal trademark authority is sufficient to establish rights in a mark.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).  While Respondent resides in South Korea, the Panel further finds Complainant is not required to register its mark within South Korea in order to establish rights in the mark..  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Therefore, the Panel finds Complainant has established rights in the AMEGYBANK mark through Complainant’s trademark registration under Policy ¶ 4(a)(i).

 

Complainant alleges Respondent’s <amegy-bank.com> domain name is confusingly similar to Complainant’s AMEGYBANK mark.  The disputed domain name contains Complainant’s entire mark and simply adds a hyphen and the generic top-level domain (“gTLD”) “.com.”  Previous panels have found the addition of a hyphen and a gTLD are insufficient to adequately distinguish the disputed domain name from a complainant’s mark.  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Therefore, the Panel concludes Respondent’s <amegy-bank.com> domain name is confusingly similar to Complainant’s AMEGYBANK mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <amegy-bank.com> domain name.  Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <amegy-bank.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <amegy-bank.com> domain name.  Complainant asserts that Respondent is not authorized to use the AMEGYBANK mark.  The WHOIS information identifies Respondent as “Lee Jaewan c/o Jaewan Lee,” which Complainant contends is not similar to the disputed domain name.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <amegy-bank.com> domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Respondent is using the <amegy-bank.com> domain name to resolve to a website featuring a hyperlink directory.  The hyperlinks resolve to third-parties, some of which compete with Complainant in the banking industry.  Respondent likely receives click-through fees from the aforementioned hyperlinks. The Panel finds this use of the confusingly similar disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant alleges Respondent’s use of the <amegy-bank.com> domain name is a part of a pattern of bad faith use and registration.  Respondent has been a respondent in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases.  See Zulunet, Inc. v. Lee Jaewan, D2001-0473 (WIPO July 16, 2001); see also Accor SoLuxury HMC v. Jaewan Lee, D2009-0574 (WIPO June 23, 2009).  The Panel finds this constitutes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).

 

Respondent’s <amegy-bank.com> domain name resolves to a website containing a directory of hyperlinks that resolve to third-parties.  Some of the third-parties directly compete with Complainant in the banking industry.  Complainant claims that Respondent’s use of the disputed domain name disrupts Complainant’s banking services business because Internet users looking to buy banking products or services from Complainant may be redirected to Complainant’s competitors through Respondent’s confusingly similar website.  Thus, the Panel finds Respondent’s use of the <amegy-bank.com> domain name does disrupt Complainant’s banking business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).

 

The Panel infers Respondent receives click-through fees from the hyperlinks relating to Complainant’s competitors in the banking industry as well as the unrelated third-party websites.  Internet users may become confused as to Complainant’s affiliation and sponsorship of the third-party hyperlinks and website resolving from the disputed domain name.  The Panel finds Respondent’s receipt of click-through fees constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <amegy-bank.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme court, NY (Ret.)

 

Dated:  January 11, 2010

 

 

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