Amegy Bank National Association v. Cykon Technology Limited
Claim Number: FA1105001386905
Complainant is Amegy Bank National Association (“Complainant”), represented by Alison Davis Frey, Texas, USA. Respondent is Cykon Technology Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <amugy.com>, which is registered with BLUE RAZOR DOMAINS, INC. (“Blue Razor”).
The undersigned, Mr. David H Tatham, 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 3, 2011; the Forum received payment on May 12, 2011.
On May 5, 2011, Blue Razor confirmed by e-mail to the Forum that the disputed domain name <amugy.com> is registered with it and that Respondent is the current registrant of the name. Blue Razor has also verified that Respondent is bound by its registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) and the Rules under the Policy (“the Rules”).
On May 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2011 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@amugy.com. Also on May 13, 2011, 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 3, 2011.
On June 7, 2011 an Additional Submission was received from Complainant and deemed by the Forum to be in compliance with its Supplemental Rule 7.
On June 7, 2011 Respondent submitted a list comprising nine Decisions by WIPO under the Policy. On June 10, 2011 Respondent submitted an Additional Submission which the Forum deemed to be out of time and so not in compliance with its Supplemental Rule 7.
On June 8 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states as follows: that it is a bank with more than 80 locations in Texas, USA; that it has, for many years, advertised its goods and services under the name AMEGY and variations thereof such as AMEGY BANK or AMEGYBANK; that it has US trademark registrations of AMEGY, AMEGYBANK, and AmegyBank; that it has a website at <www.amegybank.com> through which its customers can conduct their banking business; that it also operates a website at <www.amegy.com>; and that it enjoys significant goodwill in the name AMEGY which is truly unique and distinctive.
Complainant contends that the disputed domain name is confusingly similar to its name and trademarks as, by substituting the letter U for the letter E, it is a mere misspelling of its trademark AMEGY and would be pronounced the same.
Complainant further contends that Respondent has no legitimate rights in the disputed domain name because it only uses it in connection with a search directory page which displays advertisements and that these purport to be associated with itself or third parties in the banking industry. They also contain links that divert traffic to third party websites which are operated by its competitors and which are not affiliated with itself. In addition, Respondent is not known by the disputed domain name, and is not making a legitimate non-commercial or fair use of it.
As for the issue of bad faith, Complainant contends as follows –
· Respondent receives a fee every time someone clicks on the links on the website at the disputed domain name;
· Respondent featured in a previous Decision under the Policy which found against it;
· A search shows that Respondent owns over 9000 domain name registrations;
· Respondent’s website displays link titles that are a clear reference to the goods and services offered by Complainant in connection with its AMEGY trademark;
· Respondent has no trademark rights in the disputed domain name, which does not consist of any legal name or a name commonly used by Respondent;
· Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and it has made no bona fide non-commercial or fair use of the name.
· The disputed domain name incorporates exactly Complainant’s own highly distinctive trademark AMEGY with the exception that the letter U has been substituted for the letter E.
B. Respondent
Respondent acknowledges that Complainant owns the three trademark registrations referred to in the Complaint, namely AMEGY BANK, AmegyBank, and AMEGY by virtue of an assignment from Southwest Bank of Texas, National Association.
However it contends that the two domain names <amegybank.com> and <amegy.com>, also referred to in the Complaint, are owned not be Complainant but by Zions Bankcorporation. Thus, Complainant does not have any exclusive rights in either ‘amegybank’ or ‘amegy’ in domain name registration.
Respondent contends that its domain name ‘amugy’ is pronounced substantially differently from Complainant’s name and trademark AMEGY. Furthermore AMUGY is not a misspelling of AMEGY as Complainant has contended, it is actually inspired by the Hungarian word amúgy meaning “anyway”, just omitting the acute accent over the letter ‘u’.
In addition a search on the Google® search engine for “amúgy” generates a return of tens of millions of related websites none of them belonging to or associated with Complainant.
Respondent contends that the homepage of the site at the disputed domain name is in fact a generic search directory page displaying different varieties of advertisements all for a bona fide commercial use and it is not used to divert internet users from looking at Complainant’s website. Furthermore, pay-per-click websites are not in and of themselves unlawful or illegitimate.
The copy of Respondent’s website that was submitted by Complainant is misleading, because the advertisements on the website are generated by an advertising agent independently from Respondent, and the contents of the advertisements will vary according to the different subject matter of the searches and the different geographic location of the people conducting the search. It is not a website specifically displaying advertisements for any particular industry.
Respondent further contends that it had no intention of taking advantage of Complainant’s rights in its trademarks. It did not know of Complainant, or its trademarks, or its business which is only a local Texas bank. Complainant is completely unknown in, and does not and has never had an office in, Hong Kong where Respondent is incorporated. There is no evidence that Respondent knew of Complainant or its trademarks prior to the registration of the disputed domain name.
Respondent strongly denies that it has engaged in a pattern of bad faith registration and submits that Complainant has produced no evidence thereof. One Decision is insufficient to prove this and Respondent referred to two other Decisions in which it had been the Respondent and in which it was found that the Complainant had not established their case. Indeed in one of them there had been a finding of reverse domain name hijacking by the Complainant.
Respondent contends that it has never attempted to sell the disputed domain name and it annexed a copy of a report showing that there were only 216 visits to the webpage in 473 days between February 2010 and May 2011 i.e. less than one visit for every two days. The same report indicates that there has been no revenue from the website, which indicates that no one has ever clicked on any of the advertisements on the site.
C. Additional Submissions
Complainant
In its Additional Submission, Complainant points out that the company Zionscorporation, mentioned by Respondent, is its parent company, a fact of which Respondent must be aware as it is clearly stated on the Zionscorporation website. It holds the domain names in trust for Complainant, as further evidenced by the fact that the entire content of the websites at these domain names relates to Complainant.
Complainant disagrees that the disputed domain name and its trademark could be pronounced differently. They are only one letter different and if the mark were to be heard but not seen it would likely be misinterpreted as ‘amugy’ as Complainant’s trademark is pronounced ‘amejē’.
Complainant disagrees that ‘amúgy’ is the Hungarian word for ‘anyway’, annexing several dictionary extracts as proof thereof, and it queries why anyone should choose an obscure Hungarian word for a domain name. Further, the “tens of millions” of entries for ‘amúgy’ on Google referred to by Respondent are impossible to prove as only the first page of the search was filed. However, in Complainant’s view, these arguments are not relevant to the question of whether ‘amugy’ is or is not confusing similar to ‘amegy’.
Complainant contends that none of Respondent’s arguments establish that it has any rights or a legitimate interest in the disputed domain name, and Complainant again analyses the content of the website at the disputed domain name and alleges that Respondent has manipulated the links on the page which is quite possible to do.
Complainant distinguishes the facts of the present case from the two cases referred to by Respondent in which it was also the Respondent. Also, the fact that Complainant is unknown in Hong Kong is irrelevant.
Respondent
As noted above, Respondent’s Additional Submission was out of time. However the Annexes were timely filed, and the Panel feels that it would be unfair on Respondent to ignore it entirely, given the trouble he may have gone to in preparing it and locating so many apparently relevant prior Decisions. The Panel will therefore exercise its discretion under paragraph 10 of the Rules, and in particular Rule 10(b) under which it is instructed to ensure that all parties are given a fair opportunity to present their case, and will take Respondent’s Additional Submission into consideration.
However in fact it contains little that is new. Respondent denies that it could ever have been aware of the relationship between Complainant and Zionscorporation. Respondent also argues that it is unnecessary to prove how the Hungarian word ‘amugy’ should be correctly translated into English, and alleges that in fact ‘amúgy’ is a very popular word.
Respondent repeats the allegation that the use of the disputed domain name for a pay-per-click website is entirely legitimate.
Respondent alleges that in fact the onus is on Complainant to prove that its trademarks were well-known in Hong Kong at the time the disputed domain name was registered.
He concludes by stating that this is not a case of ‘typosquatting’ but one where the parties have independently invented similar but different words for registering their respective domain names.
Complainant is a Texas based bank, trading for a number of years under the name AMEGY. It is the owner of the following three trademarks, all of them registered with the USPTO –
AMEGY No. 3,269,288 in Class 36 for “Banking services; on-line banking; investment banking, advice, brokerage and management services; securities brokerage services; insurance agency, administration and consultation services; mortgage banking and lending services; equipment financing services”, and registered on July 24, 2007 claiming January 26 2005 as its date of first use.
AMEGY BANK No. 2,979,655 in Class 36 for “Banking services; investment services, namely investment fund transfer and transaction services, funds investment, investment advice, investment brokerage, investment consultation, investment management, maintaining escrow accounts for investments and securities brokerage services; mortgage services namely mortgage banking, mortgage lending and maintaining mortgage escrow accounts.” and registered on January 26, 2005 claiming that date as its date of first use.
AmegyBank (logo) No. 3,105,196 in Class 36 for “Banking services; on-line banking; investment banking, advice, brokerage and management services; securities brokerage services; insurance agency, administration and consultation services; mortgage banking and lending services; equipment financing services”, and registered on June 13, 2006 claiming January 26, 2005 as its date of first use.
There is not a great deal of information about Respondent. It is a Hong Kong based limited company, and the owner of several thousand domain names. Complainant puts this figure as “over 9,400”, but according to one of its annexes, a page from DomainTools, Cykon Technology Limited owns “about 42,298 other domains”.
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."
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.
Complainant satisfies the second part of paragraph 4(a)(i) by having rights in the name AMEGY by virtue of a trademark registration of this name, as well as the two variations thereof which contain this name – AMEGY BANK and the AmegyBank logo. Complainant alleges that the main part of the disputed domain name <amugy.com> is merely a misspelling of its trademark AMEGY as it substitutes the letter U for the letter E. Respondent ridicules this argument saying that the AMUGY is not a misspelling of AMEGY, that it is a dictionary word, and that the two words differ substantially in pronunciation.
When comparing a trademark with a domain name it is customary to ignore any gTLD suffix such as ‘.com’ so the comparison in this case is between AMUGY and AMEGY. The former is alleged by Respondent to be a Hungarian word meaning ‘anyway’ although with an acute accent over the letter ‘u’. Complainant does not accept this, arguing that it is nothing of the sort, and submits extracts from several dictionaries in support of its claim that the word has no meaning in Hungarian. However in the opinion of the Panel this is irrelevant. Under the Policy there are many examples of dictionary words being found to be confusingly similar to trademarks. See, e.g., Sweeps Vacuum & Repair Ctr., Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (examining the similarities between the different uses of the term SWEEPS); see also Owens Corning Fiberglas Tech., Inc. v. Hammerstone, D2003-0903 (WIPO Dec. 29, 2003 (finding similarities between CULTERED STONE and CULTURED STONE); see also St. Andrews Links Ltd. v. Refresh Design, D2009-0601 (WIPO June 22, 2009) (involving THE OLD COURSE and THE OLD COURSE); see also Terroni Inc. v. Gioacchino Zerbo, D2008-0666 (WIPO July 1, 2008) (analyzing TERRONI and TERRONI). This last is particularly relevant to the present case as it too involved a word not in the English language.
For the majority of English-speaking people – and English is the chief language of the USA where Complainant is based as well as being one of two official languages in Hong Kong where Respondent is situated – the disputed domain name could be pronounced in a variety of ways. Either as AM–YOU–GEE, as AM–YOU–JEE, as AM–ER–GEE, or as AM-ER-JEE. Pronunciation of Complainant’s trademark actually coincides totally with the last two of these examples, whilst it is similar to the first two. Complainant alleges that AM-ER-JEE is correct.
This closeness in pronunciation, coupled with the fact that of the two marks there is only a single letter – out of 5 – which is different, brings the Panel to conclude that the disputed domain name is confusingly similar to a trademark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is therefore proved.
It is well established that the burden for proving that a Respondent has no rights or legitimate interests in a disputed domain name rests with a Complainant. However this puts it in the almost impossible position of proving a negative. So it is customary, when a Complainant has made out a prima facie case that a Respondent lacks rights and legitimate interests in a disputed domain name, for the burden to shift to Respondent to show that it does have rights or legitimate interests. See, e.g., Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
In this case the Panel finds that Complainant has indeed made out a prima facie case. Therefore the burden shifts to Respondent.
According to paragraph 4(c) of the Policy there are three ways for a Respondent to demonstrate that he does have rights or legitimate interests in a disputed domain name. It is clear in this case that Respondent (Cykon Technology Limited) does not qualify for one of them, namely that he has been commonly known by the name ‘amugy’ [paragraph 4(c)(ii)]. Thus the Panel must decide whether Respondent can prove that it qualifies under either of the other two ways.
Firstly, could it be said that Respondent is using the name without intent for commercial gain [paragraph 4(c)(iii)]? He states in the Response that he has not generated any revenue from the disputed domain name, despite the website having been available between February 2010 and June 2011 for 473 days. However both parties are agreed that the site at the disputed domain name is of the pay-per-click variety and so designed to generate revenue. Furthermore, the fact that Respondent had to make an admission of a nil revenue return is an indication that he had presumably hoped to have made some money out of the site. Thus, the Panel has concluded that Respondent had intended to gain financially and so commercially from his website, and so cannot rely on paragraph 4(c)(iii) of the Policy.
But has Respondent used the name in connection with a bona fide offering of goods or services [paragraph 4(c)(i)]? There is some dispute about the content of the site. Complainant has produced a copy of a single page from the site, and although Complainant says that this shows advertisements for itself or others in the banking industry with links to sites operated by its competitors, in fact the only references on the enclosure are to mortgages, which is unsurprising as it can be seen that ‘mortgages’ was the word entered by Complainant in the search box on the site. Respondent counters by saying that his site is a generic search directory; that Complainant’s copy of the site is misleading because any advertisements on the site are generated by an agent independently of himself; and that the contents will vary according to which particular subject matter is selected by a visitor and according to the geographic location of that visitor.
Complainant says that the site can be manipulated by typing in any search term and reading off the results. In its case it claims to have discovered links to banking and mortgaging services. It says that in any case how the site was constructed is irrelevant; that the main purpose of the site is to generate revenue; and just because the site has not been wildly successful this does not convert it from that intention. Indeed, anyone visiting the site is invited to enter a search term and could therefore obtain information about banks and banking with very little difficulty, so the Panel agrees with Complainant on this point.
Respondent claims that it has been found in a number of Decisions under the Policy that pay-per-click sites are not, in themselves, contrary to the Policy, and this is true, but there are just as many Decisions finding the opposite. For example, it was found in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii)) of the Policy. Also, in Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) it was said by the panel that “Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii).”
The consensus view on this point is that it will depend on the circumstances, and in the recently published Second Edition of the WIPO Overview of Panel Views on Selected UDRP Questions says that pay-per-click links “may be permissible in some circumstances, but would not of itself confer rights or legitimate interests . . . especially where resulting in a connection to the goods or services competitive with those of the rights holder” (emphasis added).
In the present case, the Panel agrees with Complainant that it is just bad luck that Respondent has allegedly received no revenue from its website. He clearly intended to do so. However, with thousands of other domain names to his name he presumably does not go entirely unrewarded.
In all the circumstances, the Panel has come to the conclusion that Respondent does indeed have no rights and no legitimate interests in the name AMUGY as a domain name, and that paragraph 4(a)(ii) is therefore proved.
There has, as Complainant has proved, been one Decision that found against Respondent, namely Mejeriforeningen Danish Dairy Bd. v. Cykon Tech. Ltd., D2020-0776 (WIPO July 14, 2010), but then there have been two others in which he was exonerated, namely Zenni Optical, LLC v. DNS Admin. Cykon Tech. Ltd., D2009-1594 (WIPO Jan. 29, 2010) and Saurikit, LLC v. Cykon Tech. Ltd. D2010-2193 (WIPO Feb. 18, 2011). The facts in both of these latter two cases differed markedly from those in the present case, and indeed Respondent comes out of them both rather well.
However, just as one swallow does not make a Summer[NAF1] , a single adverse Decision is insufficient to say that Respondent has engaged in any pattern. Nor is he guilty either of registering the name in order to sell it, or to disrupt Complainant’s business, so the only part of paragraph 4(b)(iv) of which he might be guilty is whether he has attempted to attract visitors to his site for commercial gain by creating a likelihood of confusion with Complainant and its trademarks.
This is somewhat marginal, but bad faith registration and use was found, for example, in Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007). This was a situation where the Respondent was adamant that he was not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked.’ However, for a number of reasons, the Panel in that case found that it was irrelevant whether or not respondent was personally receiving any of those click-through referral fees, the key fact was that Respondent, in collaboration with the domain parking service, was exploiting Complainant’s good will. Also, in Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum Jan. 15, 2008) the view of the Panel was that, in the absence of evidence to the contrary in any particular case, a party in the position of the respondent is also responsible for the sponsored links appearing on his website.
In all the circumstances therefore, the Panel finds that in this case Respondent has acted in bad faith and that paragraph 4(a)(iii) is proved.
Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amugy.com> domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: June 22, 2011
[NAF1]Not sure about capitalization
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