Amegy Bank National Association v. Charlie Kalopungi
Claim Number: FA1101001366687
Complainant is Amegy Bank National Association (“Complainant”), represented by Alison Davis Frey, Texas, USA. Respondent is Charlie Kalopungi (“Respondent”), of the Seychelles Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amegybankonline.com>, registered with MONIKER ONLINE SERVICES, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 7, 2011; the National Arbitration Forum received payment January 10, 2011.
On January 14, 2011, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <amegybankonline.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 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@amegybankonline.com. Also on January 19, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <amegybankonline.com>, is confusingly similar to Complainant’s AMEGYBANK mark.
2. Respondent has no rights to or legitimate interests in the <amegybankonline.com> domain name.
3. Respondent registered and used the <amegybankonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Amegy Bank National Association, owns a trademark registration for its AMEGYBANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,105,196 issued June 13, 2006). Complainant uses its AMEGYBANK mark in connection with small business banking, private financial management and trust services, and retail and mortgage banking services. Complainant operates a website at <amegybank.com>.
Respondent, Charlie Kalopungi, registered the disputed domain name August 25, 2010. Respondent’s disputed domain name resolves to a directory website displaying advertisements that purport to be associated with Complainant or other third-parties in the banking industry.
Complainant submits evidence that Respondent has been the respondent in multiple prior UDRP proceedings which resulted in the transfer of the domain names in those cases to the respective complainants. See Acad., Ltd., d/b/a Acad. Sports & Outdoors v. Charlie Kalopungi, FA 1347406 (Nat. Arb. Forum Oct. 29, 2010); see also U.S. Smokeless Tobacco Mfrg. Co. LLC v. Charlie Kalopungi, FA 1350232 (Nat. Arb. Forum Nov. 10, 2010).
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 holds a trademark registration for its AMEGYBANK mark with the USPTO (Reg. No. 3,105,196 issued June 13, 2006), which Complainant asserts gives it rights in the mark. A USPTO trademark registration is sufficient to establish a complainant’s rights in a mark, even when the respondent resides outside that jurisdiction. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also 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). The Panel finds that Complainant in this case has demonstrated sufficient evidence of its rights in the AMEGYBANK mark based on its registration of the mark with the USPTO.
Complainant urges that Respondent’s <amegybankonline.com> domain name is confusingly similar to Complainant’s AMEGYBANK mark. The disputed domain name incorporates Complainant’s mark in its entirety, adds the generic word “online,” and affixes the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the term “online” and the gTLD are insufficient to distinguish the disputed domain name from Complainant’s mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); 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).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected AMEGYBANK mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant next alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Complainant must first make a prima facie case to support its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent to prove that it does have such rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Based on the allegations contained in the Complaint, the Panel finds that Complainant made a prima facie case. Where the Respondent files no Response, the Panel also is permitted to make an inference that Respondent’s failure to submit a Response is additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See 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.”). Nevertheless, this Panel still examines the record to determine whether evidence there suggests that Respondent has rights or legitimate interests in the disputed domain name.
Complainant notes that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <amegybankonline.com> domain name indicates that the registrant is “Charlie Kalopungi.” No other evidence in the record supports any finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under a Policy ¶ 4(c)(ii) analysis. See 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant alleges that Respondent’s disputed domain name resolves to a directory website featuring advertisements and links to third-parties both unrelated to, and in competition with, Complainant’s banking business. The Panel presumes that Respondent profits through the receipt of pay-per-click fees upon redirecting Internet users to these third-party sites. The Panel finds that Respondent’s use of the <amegybankonline.com> domain name to advertise third-party businesses, some of which compete with Complainant, is 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly urges that Respondent registered and used or passively held the disputed domain name. Complainant also provided evidence that Respondent has been the subject of multiple prior UDRP proceedings claiming registration of domain names containing the marks of others that resulted in the transfer of the domain names at issue in those cases to the respective complainants. See Acad., Ltd., d/b/a Acad. Sports & Outdoors v. Charlie Kalopungi, FA 1347406 (Nat. Arb. Forum Oct. 29, 2010); see also U.S. Smokeless Tobacco Mfrg. Co. LLC v. Charlie Kalopungi, FA 1350232 (Nat. Arb. Forum Nov. 10, 2010). The Panel finds that Respondent’s prior negative UDRP history constitutes evidence of a pattern of cybersquatting and supports findings of Respondent’s bad faith registration and use pursuant to 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 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 Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant argues that Internet users who visit the website resolving from Respondent’s disputed domain name are redirected to websites of Complainant’s competitors. Complainant alleges that Respondent’s diversion of Internet users to competing businesses is evidence of bad faith under Policy ¶ 4(b)(iii). The Panel agrees and finds that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business and is therefore evidence of bad faith 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 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 asserts that Respondent is presumably paid a fee or commission when Internet users click on the various links displayed on Respondent’s resolving website and are redirected to third-party websites. Complainant urges, and the Panel agrees, that Respondent has therefore intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the AMEGYBANK mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Panel therefore finds that such use supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). See 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).”); see also 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).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amegybankonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 24, 2011.
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