Amegy Bank National
Association v. Admin - c/o OS Domain Holdings VIII, LLC
Claim Number: FA1005001325479
PARTIES
Complainant is Amegy Bank National Association, represented by Alison
Davis Frey (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amegybamk.com>, registered with Nameking.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 19, 2010.
On May 19, 2010, Nameking.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <amegybamk.com> domain name is registered
with Nameking.com, Inc. and that the
Respondent is the current registrant of the name. Nameking.com,
Inc. has verified that Respondent is bound by the Nameking.com, 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 May 24, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of June 14, 2010 by which Respondent could file a Response
to the Complaint, via e-mail to all entities and persons listed on Respondent’s
registration as technical, administrative, and billing contacts, and to
postmaster@amegybamk.com by e-mail. Also on May
24, 2010, the Written Notice of the Complaint, notifying Respondent of
the email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A timely Response was received and determined to be complete on June 11, 2010.
On June 15, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that:
· It is a prominent Texas bank with more than 80 locations in the said state, specialized in small business banking and also serving other categories of clients.
· It has extensively advertised its goods and services under the mark AMEGY BANK and variations thereof (such as AMEGY and AMEGYBANK and Design, hereinafter referred to as the “AMEGY Marks”) and has expended considerable effort and expense in offering quality goods and services under these marks.
· It operates a website at www.amegybank.com which prominently displays the AMEGY Marks and through which customers can conduct their banking.
· It is the holder of the following trademarks: AMEGY: U.S. Reg. No. 3,269,288, AMEGYBANK & Design: U.S. Reg. No. 3,105,196 and AMEGY BANK: U.S. Reg. Nos. 2,979,655.
· The disputed domain name is identical or confusingly similar to Complainant’s AMEGY Marks, as it consists of the identical mark AMEGY BANK, with the replacement of the letter “N” with the letter “M,” which is a common typographical error due to the similarity of these letters and their proximity to each other on the keyboard.
· Respondent has no rights or legitimate interests in the disputed domain name.
·
Respondent uses the domain name in connection
with a search directory page displaying advertisements that purport to be
associated with Complainant or third parties in the banking industry, advertisements
that include links diverting traffic to third-party websites that are not
affiliated with Complainant, and in some
· Respondent registered and has been using the disputed domain name in bad faith.
· Respondent has engaged in a pattern of bad-faith registration and use of others’ trademarks as domain names.
·
Respondent’s bad faith is also evidenced by the
fact that it owns no trademark or other intellectual property rights in the
domain name.
B. Respondent
In its
Response, the Respondent states that:
·
It owns a portfolio of
generic domain names which it acquired through lawful and fair methods.
·
As part of its
business practice, it has a well-known dispute resolution policy whereby it
invites putative complainants to contact it regarding domain names that the
said complainants believe violate a trademark.
·
It has a liberal
transfer policy towards such putative complainants as it typically agrees to
voluntarily transfer domain names, irrespective of the legitimacy of the complainant’s
arguments, in an effort to avoid the needless time and expense associated with
litigation and administrative hearings.
·
Respondent and its
counsel contacted Complainant to offer a voluntary transfer of the domain name
at issue and Complainant did not accept this proposal.
·
It is willing to voluntarily transfer the
Domain Name to the Complainant, without admitting fault or liability,
·
It requests that the
transfer be ordered without findings of fact or conclusions as to Policy 4(a)
other than the Domain Name be transferred.
FINDINGS
The disputed domain name is confusingly similar with the trademarks owned by the Complainant. The Respondent seems to be engaged in a pattern of bad-faith registration and use of others’ trademarks as domain names. In this sense, the Panel considers that the consent-to-transfer provided by the Respondent shall not serve as sole sufficient basis for the transfer of the disputed domain name without findings of fact or conclusions as to Policy 4(a).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Preliminary Issue: Consent to Transfer
As
stated in the Response, the Respondent consents to transfer the disputed domain name to
Complainant. In this sense the Respondent requests that
the transfer be ordered without findings of fact or conclusions as to Policy
4(a) other than the Domain Names be transferred.
In the
UDRP Panels’ practice, there are different approaches of the
“consent-to-transfer” going from considering that such consent represents the
sufficient sole basis for a transfer without findings of fact or conclusions
under Policy 4 (a), as the Respondent in these proceedings requests, to the
consideration of such consent as an element in the appreciation of all the
Policy elements.
Neither the Policy nor the Rules or the Supplemental Rules
provide for criteria to rule on this issue. On the other side, the scope of the
Policy is to deal with cybersquatting. Cybersquatting is the
“deliberate, bad faith, abusive registration of domain names in violation of
others rights.” Final Report of the WIPO Internet Domain Name Process 29 (1999), available at http://www.wipo.int/amc/en/processes/process1/report/finalreport.html.
From the evidence presented in this case it results that the
Respondent has engaged in a pattern of bad-faith registration and use of
others’ trademarks as domain names. For such reason the Panel shall deny the
request of the Respondent to rule on the Complaint solely on the basis of its
consent-to-transfer.
The
Panel agrees with other Panels before, that the “consent-to-transfer” may be
considered a way for cybersquatters to avoid adverse findings against
them. See Graebel Van Lines, Inc. v.
In this sense, the Panel decides that it will analyze the case under the UDRP elements.
Complainant has submitted evidence to show that it owns trademark
registrations with the United States Patent and Trademark Office
("USPTO") for its AMEGY BANK mark (e.g., Reg. No. 2,979,655 issued July 26, 2005). The Panel finds that Complainant has
established rights in its AMEGY BANK mark under Policy ¶ 4(a)(i)
through its trademark registrations with the USPTO. See
Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29,
2005) (finding from a preponderance of the evidence that the complainant had
registered its mark with national trademark authorities, the Panel determined
that “such registrations present a prima
facie case of Complainant’s rights in the mark for purposes of Policy ¶
4(a)(i).”); see also 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).
The Panel agrees with the Complainant’s contentions that Respondent’s disputed domain name is confusingly similar to its AMEGY BANK mark, as the
misspelling of the term “bank” by replacing the letter “n” with the letter “m,”
is a common one and represents indication of typosquatting which seems to be a
familiar tactic to the Respondent when registering third parties’ trademarks (See
SAS Inst., Inc. v. OS Domain Holdings VIII, LLC, FA 1259735 (Nat. Arb. Forum June 5, 2009).
Therefore, the Panel finds that the first element of
the Policy has been proven by the Complainant.
Complainant argues that Respondent is not commonly known by the disputed domain name and the Panel agrees on this aspect, based upon the WHOIS registrant information. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
In addition the Complainant
asserts that Respondent is not using the disputed domain name for a bona fide offering of goods or services
or a legitimate noncommercial or fair use and the Panel agrees with these
assertions, too. Complainant has
submitted screen-shot evidence to show that Respondent is using the disputed
domain name to resolve to a website that displays various third-party links to
competing companies in the banking and financial services industry. Complainant further contends that Respondent
receives click-through fees for the advertisements and links that are displayed
on the website resolving from the disputed domain name. The Panel finds that such use of the disputed
domain name cannot be considered in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), where Respondent is maintaining a directory website
that advertises and contains hyperlinks to competing companies to Complainant
in the banking industry. See 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)); see also
Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006)
(finding that the respondent’s use of domain names confusingly similar to the
complainant’s WAL-MART mark to divert Internet users seeking the complainant’s
goods and services to websites competing with the complainant did 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)).
The Panel finds that the Complainant has made
a prima facie case that the Respondent has no rights or legitimate
interests in the disputed domain name.
Complainant has submitted evidence to show
that Respondent has been a Respondent in past UDRP proceedings, and was ordered
to transfer the disputed domain name in that case to the respective
complainant. See
SAS Inst., Inc. v. OS Domain Holdings VIII, LLC, FA 1259735 (Nat. Arb.
Forum June 5, 2009). Complainant
contends that such evidence shows that Respondent has registered and used the
disputed domain name in the current action in bad faith. The Panel finds that it is likely to consider
that the Respondent has engaged in a pattern of bad faith registration of
domain names and as such has registered and used the disputed domain name in
this case in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Although Complainant did not argue bad faith
registration and use under Policy ¶ 4(b)(iii), the
Panel finds that Respondent’s diversion of Internet users to competing
businesses of Complainant is evidence of bad faith under Policy ¶
4(b)(iii). See David Hall Rare Coins v.
Complainant argues that Respondent has attempted to attract Internet users to its website for commercial gain through its use of click-through fees associated with the hyperlinks and advertisements displayed on Respondent’s website. Complainant contends that such use is further evidence of Respondent’s bad faith registration and use of the confusingly similar disputed domain name. In this sense, the Panel finds that Complainant has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) where Respondent is using the disputed domain name to display various hyperlinks and advertisements to Complainant’s competitors in the banking and financial services industry, and Respondent presumably collects click-through fees from the links displayed thereon. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Therefore, the Panel
finds that the Complainant has also proven the third element of the Policy.
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 <amegybamk.com> domain name be TRANSFERRED
from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: June 29, 2010
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