national arbitration forum

 

DECISION

 

Amegy Bank National Association v. AA7 Group Ltd. / Mr Charlie Kalopungi

Claim Number: FA1108001402803

 

PARTIES

Complainant is Amegy Bank National Association (“Complainant”), represented by Alison Davis Frey of Pirkey Barber LLP, Texas, USA.  Respondent is AA7 Group Ltd. / Mr Charlie Kalopungi (“Respondent”), Seychelles.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aamegybank.com>, registered with Key-Systems GmbH.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 11, 2011; the National Arbitration Forum received payment on August 12, 2011.

 

On August 11, 2011, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <aamegybank.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name.  Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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”).

 

On August 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 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@aamegybank.com.  Also on August 12, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

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

 

On September 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <aamegybank.com> domain name is confusingly similar to Complainant’s AMEGYBANK mark.

 

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

 

3.    Respondent registered and used the <aamegybank.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Amegy Bank National Association, provides banking services throughout the state of Texas.  Under its AMEGYBANK mark, Complainant provides small business banking, private financial management, and retail and mortgage banking services.  Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its marks:

 

AMEGY BANK (Reg. No. 2,979,655 registered July 26, 2005)

AMEGYBANK (Reg. No. 3,105,196 registered June 13, 2006)

AMEGY (Reg. No. 3,269,288 registered July 24, 2007)

 

Respondent, AA7 Group Ltd. / Mr Charlie Kalopungi, registered the <aamegybank.com> domain name on July 20, 2010.  The disputed domain name resolves to a parked website that hosts hyperlinks, entitled “Banking Services,” “Personal Banking,” “Online Bank,” etc., that resolve to Complainant’s competitors in the banking industry.

 

Respondent has been a respondent in previous UDRP cases in which the disputed domain names were transferred to the respective complainants.  See Florida Dep’t of Mgmt. Servs. v. Moniker Privacy Servs. / Charlie Kalopungi, AA7 GROUP LTD, D2010-1389 (WIPO Dec. 28, 2010); see also Merck Sharp & Dohme Corp. v. Moniker Privacy Servs. / AA7 GROUP LTD, Charlie Kalopungi, D2010-1286 (WIPO Sept. 21, 2010).

 

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

 

Complainant holds multiple trademark registrations with the USPTO for its marks:

 

AMEGY BANK (Reg. No. 2,979,655 registered July 26, 2005)

AMEGYBANK (Reg. No. 3,105,196 registered June 13, 2006)

AMEGY (Reg. No. 3,269,288 registered July 24, 2007)

 

The Panel finds that these trademark registrations are sufficient for Complainant to establish rights in its AMEGY BANK, AMEGYBANK, and AMEGY marks for the purpose of Policy ¶ 4(a)(i), even though Respondent resides or operates outside of the United States.  See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant claims that Respondent’s <aamegybank.com> domain name is confusingly similar to Complainant’s AMEGYBANK mark because the only differences between the two are the additions of the letter “a” and the generic top-level domain (“gTLD”) “.com.” The Panel determines that these additions fail to remove the disputed domain name from the realm of confusing similarity.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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).  Thus, the Panel holds that Respondent’s <aamegybank.com> domain name is confusingly similar to Complainant’s AMEGYBANK mark under Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <aamegybank.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient 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 disputed 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 Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).

 

Complainant asserts that Respondent is not commonly known by the <aamegybank.com> domain name.  While Complainant does not make any arguments aside from this assertion, the Panel has examined the record and has failed to find any evidence that would support a finding that Respondent is commonly known by the disputed domain name.  The WHOIS information, which lists the registrant of the disputed domain name as “AA7 Group Ltd. / Mr Charlie Kalopungi,” is not similar to the <aamegybank.com> domain name and supports Complainant’s assertion.  Based on the evidence in the record, or lack thereof, the Panel concludes that Respondent is not commonly known by the <aamegybank.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant claims that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  Complainant provides a screen shot of the website resolving from the <aamegybank.com> domain name that shows hyperlinks entitled “Banking Services,” “Personal Banking,” “Online Bank,” etc.  Complainant claims that these hyperlinks resolve to third-parties, some of which compete with Complainant in the banking industry.  The Panel agrees with Complainant that Respondent likely receives a click-through fee each time an Internet user clicks on one of the hyperlinks.  Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <aamegybank.com> domain name pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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) is satisfied.

 

Registration and Use in Bad Faith

 

As the Panel noted in its findings, Respondent has been a respondent in previous UDRP cases in which the disputed domain names were transferred to the respective complainants.  See Florida Dep’t of Mgmt. Servs. v. Moniker Privacy Services / Charlie Kalopungi, AA7 GROUP LTD, D2010-1389 (WIPO Dec. 28, 2010); see also Merck Sharp & Dohme Corp. v. Moniker Privacy Servs. / AA7 GROUP LTD, Charlie Kalopungi, D2010-1286 (WIPO Sept. 21, 2010).  The Panel holds that Respondent’s involvement in prior UDRP proceedings is evidence of Respondent’s pattern of bad faith registration and use, which is evidence of Respondent’s bad faith registration and use in this proceeding under Policy ¶ 4(b)(ii).  See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)].  The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).

 

Complainant asserts that Respondent’s registration and use of the <aamegybank.com> domain name diverts Complainant’s customers to Complainant’s competitors, which disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  As noted above, the disputed domain name resolves to a parked website that features hyperlinks to Complainant’s competitors in the banking industry.  The Panel agrees with Complainant that Respondent’s registration and use of the <aamegybank.com> domain name disrupts Complainant’s banking business and constitutes bad faith under Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant further alleges that Respondent is:

 

[I]ntentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the AMEGY Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website, which constitutes evidence of bad faith use and registration under Policy ¶ 4(b)(iv).

 

Both the Panel and Complainant agree that Respondent likely receives click-though fees from the aforementioned hyperlinks hosted on the website resolving from the <aamegybank.com> domain name.  Consequently, the Panel concludes that Respondent is attempting to profit by creating confusion among Internet users, which constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(i).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

The Panel finds Policy ¶ 4(a)(iii) is 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 <aamegybank.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  September 20, 2011

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page