The Complainant is Zions Bancorporation, Inc. of Salt Lake City, Utah, United States of America (“U.S.”) represented by Callister Nebeker & McCullough, U.S.
The Respondent is Moniker Privacy Services / Domain Manager of Pompano Beach, Florida, U.S. and Bondi Junction, New South Wales, Australia, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2012. On February 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 24, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 29, 2012.
The Center verified that the Complaint together with the amended 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 March 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2012.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 27, 2012. 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
The Complainant has submitted evidence that it is the owner of the following trademark registrations with the United States Patent and Trademark office (USPTO):
ZIONS BANK with trademark registration No. 2,381,006 and registration date August 29, 2000.
ZIONSBANK.COM with trademark registration No. 2,531,436 and registration date January 22, 2002.
The disputed domain name was registered on February 13, 2012. 5. Parties’ Contentions A. Complainant
The Complainant’s registered trademarks ZIONS BANK and ZIONSBANK.COM are in use for numerous financial services. Since 1995, the Complainant has been the registrant of the domain name from which the Complainant advertises and offers its banking services.
The disputed domain name contains a name that is identical or confusingly similar to the Complainant’s registered marks ZIONS BANK and ZIONSBANK.COM. The disputed domain name also includes the word “online” which merely is descriptive of the services that are provided via the Internet. Accordingly, the descriptive word “online” does not sufficiently distinguish the disputed domain name from the Complainant’s registered trademarks. Through the use of the Complainant’s marks, the disputed domain name directs consumers, either directly or indirectly, to a website that references various banking terms and likely confuses consumers as to the source of the goods being offered under the Complainant’s marks.
The Complainant has been using the trademark ZIONS BANK in commerce since at least as early as 1992 and the trademark ZIONSBANK.COM since at least as early as 1995. The disputed domain name was registered in February 2012.
The Respondent is not a licensee of the Complainant’s trademarks and has not obtained authorization to use the Complainant’s marks.
The Respondent is not using the disputed domain name as part of a bona fide offering of goods and services. Instead, the Respondent uses the disputed domain name to provide various banking-related search queries that direct consumers to third party websites.
The use of the Complainant’s marks in the disputed domain name and on the Respondent’s website is misleading and may divert consumers to this website instead of the Complainant’s official and authorized website. Because the Respondent’s website is misleading, the Respondent may also use it in connection with various phishing and fraudulent activities. The Respondent’s use of the Complainant’s trademarks may tarnish the marks that are at issue.
The disputed domain name leads to a website that provides links to various banking-related search queries, which identify services that are identical or similar to the type of services offered by the Complainant under its registered marks. The Respondent is trying to divert customers of the Complainant from the Complainant’s website to the Respondent’s website by using the dominant portion of the Complainant’s marks in the disputed domain name and on the Respondent’s website. The Respondent is intentionally creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademarks ZIONS BANK and ZIONSBANK.COM.
The disputed domain name incorporates the Complainant’s trademark ZIONS BANK in its entirety with the addition of the generic word “online”. The Panel agrees with the Complainant’s contention that the ability for such a generic word to distinguish the disputed domain name from the trademark of the Complainant is very limited. In fact, the addition of the word “online” may add to the confusion and similarity between the disputed domain name and the Complainant’s trademark as the Complainant offers banking services online.
Furthermore, the disputed domain name is identical to the Complainant’s trademark ZIONSBANK.COM except for the addition of the generic word “online” between the words “bank” and “.com”.
Having the above in mind, it is the opinion of this Panel that the disputed domain name is confusingly similar to the Complainant’s trademarks ZIONS BANK and ZIONSBANK.COM and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant’s trademark registrations for ZIONS BANK and ZIONSBANK.COM predate the Respondent’s registration of the disputed domain name . The Complainant has not licensed, approved or in any way consented to the Respondent’s use of any of the trademarks in the disputed domain name.
The Respondent is using the disputed domain name to divert consumers to third party websites and it has been argued by the Complainant that the Respondent is not making a legitimate use of the disputed domain name in connection with a bona fide offering of goods or services.
From the submitted evidence in this case, it is clear that the Respondent’s website, to which the disputed domain name resolves, contains numerous sponsored commercial links to third party websites. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use does not represent a use in connection with a bona fide offering of goods and services.
Although given the opportunity, the Respondent has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name . Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
As mentioned above, the Complainant has submitted evidence demonstrating that the website, to which the disputed domain name resolves, contains numerous advertising links to commercial third party websites promoting and/or offering third party products and services. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of registration and use in bad faith according to previous case law. See e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451.
Thus, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Dated: April 2, 2012
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