The Complainant is Zions Bancorporation of Salt Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America.
The Respondent is Randall Comstock of Eureka, California, United States of America 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2010. On July 2, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 6, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 6, 2010.
The Center appointed Michael A. Albert as the sole panelist in this matter on August 25, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is the owner of the following federally registered trademarks: ZIONS®, ZIONS BANK®, and ZIONSBANK.COM®. The marks ZIONS®, ZIONS BANK® and ZIONSBANK.COM® are registered and in use by Complainant for financial services, including mortgage lending and banking services.
Complainant has been using its ZIONS mark for over 100 years, since 1891, and obtained federal registration for such mark in 2000. Additionally, it has been using its ZIONS BANK mark since 1992, and obtained federal registration for the mark in 2000, and it has been using its ZIONSBANK.COM mark since 1995, and obtained federal registration for the mark in 2002.
Since 1995, Complainant, by itself or through an affiliate of Complainant, has been the registrant of the domain name , from which Complainant advertises and offers its banking services.
The Registrar has indicated that while the record was created in February 2003, Respondent acquired the registration for the Disputed Domain Name on March 18, 2010. 5. Parties’ Contentions A. Complainant
Complainant is the owner of the following federally registered trademarks: ZIONS®, ZIONS BANK®, and ZIONSBANK.COM®. The marks ZIONS®, ZIONS BANK® and ZIONSBANK.COM® are registered and in use by Complainant for financial services, including mortgage lending and banking services.
Complainant contends that the Disputed Domain Name fully incorporates Complainant's registered mark ZIONS and is confusingly similar to the ZIONS BANK and ZIONSBANK.COM marks. The Complainant goes on to say that the dominant portion of the Disputed Domain Name is the word “zions”, and the Disputed Domain Name adds the descriptive terms “mortgage” and “line” with respect to banking and mortgage- related services.
Complainant contends that through the use of Complainant's Marks, the Disputed Domain Name directs consumers, either directly or indirectly, to a website that advertises for competitors of Complainant. Further, Complainant says that consumers searching for Complainant's website, “www.”, who use the search terms "zions" and "mortgage," will immediately find the Disputed Domain Name and may mistakenly believe that the Disputed Domain Name is owned, sponsored, or endorsed by Complainant when it is not. Complainant contends that Respondent has intentionally used terms confusingly similar to Complainant's Marks.
Complainant further contends that Respondent is using the Disputed Domain Name solely to post advertisements for the services of others that are directly competitive with the services offered by Complainant. Complainant contends that because Respondent was aware of Complainant's business, and because Respondent used its website to generate advertising revenue by directing consumers to competitors of Complainant, Respondent was not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Further, the Complainant contends that because Respondent is intentionally attempting to attract Internet users to Respondent's website for commercial gain by using Complainant's marks and by placing advertisements on Respondent's website of Complainant’s competitors in order to solicit business competitive to Complainant, the registration was made in bad faith. As further evidence of bad faith, Complainant contends that Respondent has continued his activities despite notice from Complainant.
Complainant further contends that Respondent is using the Disputed Domain Name in bad faith because the website associated with the Disputed Domain Name is an intentional attempt to attract users to Respondent’s website for a commercial purpose. Specifically, Complainant contends that Respondent is intentionally misleading consumers and confusing them by making them believe that the websites associated with and linked to the Disputed Domain Name are associated with or recommended by the Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
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:
(i) the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Respondent provided no Response, and the deadline for so doing expired on August 5, 2010. Accordingly, the Respondent is in default. Given the Respondent’s default, the Panel can infer that the Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy . A. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it owns the ZIONS mark, as well as the ZIONS BANK and ZIONSBANK.COM marks (collectively, “Complainant’s Marks”). Complainant does not have a trademark registration of the phrase “”. The Disputed Domain Name is not identical to any of the Complainant’s Marks. Therefore, the first issue is whether the Disputed Domain Name and Complainant’s Marks are confusingly similar.
The Disputed Domain Name combines three elements: (1) the Complainant’s ZIONS mark; (2) the terms “mortgage” and “line”, and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “zionsmortgageline”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior WIPO UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR).
Moreover, the addition of the terms “mortgage” and “line” as a suffix to the ZION mark in the Disputed Domain Name does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant’s ZION mark. Both “mortgage” and “line” are descriptive and describe services directly related to those offered by Complainant under the relevant trademark. Consequently, the addition of these terms does not negate the confusing similarity between the Complainant’s Mark and the Disputed Domain Name. See Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363 (finding confusingly similar to DELL); Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 (finding confusingly similar to TELSTRA).
Furthermore, the proper approach is to look at the overall impression or idea created by the mark and compare the result with the domain name, an approach that was taken in Yell Ltd. v. Ultimate Search,WIPO Case No. D2005-0091. Applying that test, the overall impression of the trademark in the present case is that it is a reference to the trademark of Complainant. As the Disputed Domain Name uses the mark ZIONS, it is confusingly similar to Complainant’s ZIONS mark, which uses the same mark for identical or closely related purposes (the provision of mortgage services).
For the all of the foregoing reasons, this Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s Mark, specifically, Complainant’s ZIONS mark, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the Disputed Domain Name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant contends that Respondent has no rights to use the ZIONS mark. Respondent is not a licensee of Complainant. Complainant has provided evidence that the Respondent is using the Disputed Domain Name to direct consumers, either directly or indirectly, to a website that advertises for competitors of Complainant. Prior UDRP panels have found that such offerings are not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i). Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (finding no bona fide use where redirected to online pharmacy).
Moreover, Complainant has alleged, and Respondent has not denied, that because Respondent used his website to generate advertising revenue by directing consumers to competitors of Complainant, Respondent was not making a legitimate noncommercial or fair use of the Disputed Domain Name.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy, paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
The Panel finds compelling circumstantial evidence that Respondent likely knew of Complainant’s Marks when it registered the Disputed Domain Name. In fact, Complainant offers evidence that Respondent admitted a connection between his website and the Complainant’s Marks by stating that it placed a link on his website as a courtesy to Complainant’s customers. Based on the foregoing evidence, the Panel finds that Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its […] Trademarks.”).
Further, it is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See, e.g., Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433.
Here, by placing advertisements on Respondent’s website for competitors of Complainant in order to solicit business that is directly competitive to the services provided by Complainant, Respondent is using the Disputed Domain Name to disrupt the business of Complainant. The Panel finds that the use is in bad faith.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that the Complainant has proven the third and final element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: September 8, 2010
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