Complainant is Zions Bancorporation of Salt Lake City, Utah, United States of America (“USA”), represented by Callister Nebeker & McCullough, USA.
Respondents are Whois Privacy Service Pty Ltd of Fortitude Valley, Queensland, Australia / Mike Patterson of Cumming, Georgia, USA. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2013. On May 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 20, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 27, 2013 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 31, 2013.
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 Respondents of the Complaint, and the proceedings commenced on June 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2013. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on June 25, 2013.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on July 2, 2013. 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, based in Salt Lake City, Utah, USA, is engaged in the business of providing banking and other financial services.
Complainant owns several trademarks registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) in connection with a range of financial services:
- ZIONSBANK.COM, Registration No. 2,531,436, registered January 22, 2002, with claim of first use in commerce of July 5, 1995;
- ZIONS BANK, Registration No. 2,381,006, registered August 29, 2000, with claim of first use in commerce of July 12, 1992; and
- ZIONS, Registration No. 2,380,325, registered August 29, 2000, with claim of first use in commerce of May 13, 1891.
Complainant registered the domain name on July 5, 1995, and has used that domain name to advertise and offer its banking services.
The Domain Name was created on December 21, 2005. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name is confusingly similar to Complainant’s trademarks in that the Domain Name contains the name “zions” which is identical to one of Complainant’s registered trademarks and the dominant part of Complainant’s other registered trademarks. The addition of the letter “s” in the Domain Name does not distinguish it from Complainant’s trademarks.
Complainant further contends that Respondents have no rights or legitimate interests in the Domain Name based on that:
- Complainant used and obtained registrations for its marks for many years before Respondents registered the Domain Name;
- Respondents are not in any way authorized to use Complainant’s marks1;
- Respondents are not using the Domain Name as part of a bona fide offering of goods or services but are instead using the Domain Name to direct consumers to third party banking related websites; and
- Respondents’ use of the Domain Name may tarnish Complainant’s marks.
Complainant contends that Respondents registered and are using the Domain Name in bad faith for the following reasons:
- Respondents registered the Domain Name containing dominant parts of Complainant’s registered trademarks;
- The Domain Name leads to a website that provides links to various banking related and other search queries identifying services that are identical or similar to the types of services offered by Complainant under its registered marks;
- The Domain Name was registered primarily for the purpose of disrupting the business of Complainant;
- Respondents have displayed the mark ZIONS on the website associated with the Domain Name;
- Respondents are clearly trying to divert customers of Complainant to Respondents’ website; and
- Respondents are intentionally creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website. B. Respondent
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings
Respondents did not respond to the Complaint; therefore the Panel considers whether Respondents have been given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondents at the addresses provided in the Complaint, in Respondents’ registration information available in the publicly available WhoIs database and from the Registrar. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondents of the Complaint and the administrative proceeding and appears from the record to have achieved actual notice to Respondent WhoIs Privacy Service Pty Ltd.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), a respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondents registered and are using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has legal rights in its trademarks by reason of the registration of those marks on the Principal Register of the USPTO. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.1 (Ownership of a registered trademark generally satisfies the Policy requirement of having trademark rights).
The Domain Name is confusingly similar to at least two of Complainant’s trademarks, ZIONS BANK and ZIONSBANK.COM, incorporating both of those marks in their entireties and without variance in spelling. Prior UDRP panels have found such entire incorporation of another’s trademarks to be sufficient to establish confusing similarity. See Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd.,WIPO Case No. D2009-0828; AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758.
The Panel considers the addition of the single letter “s” to pluralize the word “bank” to be insufficient to distinguish the Domain Name from Complainant’s trademarks in appearance or sound and does not, therefore, negate the confusing similarity between the Domain Name and those marks. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (“Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.”) and ESPN, Inc. v. XC2,WIPO Case No. D2005-0444.
Complainant has proved the first element of its case. B. Rights or Legitimate Interests
A complainant bears the overall burden to prove that a respondent has no rights or legitimate interests in the domain name. See WIPO Overview 2.0, paragraph 2.1. However, where the complainant makes a prima facie case that the respondent does not possess such rights or interests, the burden of production shifts to the respondent to demonstrate that it does in fact possess such rights or legitimate interests. Id. Where, as here, a respondent fails to come forward with allegations or evidence to demonstrate that it possesses such rights or interests, the complainant’s prima facie case will usually be found sufficient to meet the complainant’s overall burden of proof. Id.
Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:
(i) before any notice to Respondents of the dispute, Respondents’ use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, or
(ii) Respondents have been commonly known by the domain name, even if Respondents have acquired no trademark or service mark rights; or
(iii) Respondents are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant can make out a prima facie case by negating such circumstances. See Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364.
While the Panel has only Complainant’s statements in the Complaint that Respondents are using the Domain Name, which is confusingly similar to Complainant’s trademarks, to divert Internet users to a web page featuring links to various financial services providers, including some that compete with Complainant, the Panel can accept Complainant’s statements as true where Respondents have not come forward to contradict them and there is no evidence in the record inconsistent with those statements. The Panel can infer also that Respondents are acting to obtain commercial gain for themselves.
Respondents’ use of the Domain Name, which exploits confusion and the value of Complainant’s trademarks for Respondents’ own commercial gain, does not constitute a bona fide offering of goods or services, a legitimate noncommercial use, or a fair use of the Domain Name that would confer upon Respondents rights or legitimate interests in the Domain Name. See WIPO Overview 2.0, paragraph 2.6.
Complainant states that Respondents have never been given permission to use Complainant’s trademarks in the Domain Name. And, lastly, while Complainant does not address it directly, there is nothing in the record to suggest that Respondents have ever been commonly known by the Domain Name. The names of Respondents suggest that neither of them may have ever been known by the Domain Name.
Respondents having failed to demonstrate any of the factors under paragraph 4(c) of the Policy, the Panel finds that Complainant’s prima facie case meets Complainant’s burden under paragraph 4(a)(ii) of the Policy and concludes that Respondents have no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Complainant must show that the Domain Name was registered and is being used in bad faith.
Respondents’ registration of the Domain Name that incorporates in their entireties two previously registered trademarks, with only a minimal, non-distinguishing change, is highly suggestive of bad faith. Respondents must have known of Complainant’s trademarks and the goodwill associated with those marks or would not have used them in registering the Domain Name and using it to provide links to financial services providers. Respondents, in default, have provided no plausible explanation for the use of Complainant’s marks in the Domain Name and have provided no evidence to establish any rights or legitimate interests in the Domain Name. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Further and more importantly, paragraph 4(b)(iv) of the Policy provides that the following is evidence of registration and use in bad faith:
“By using the domain name, you [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Respondents intentionally created a likelihood of confusion with Complainant’s trademarks when they registered the Domain Name, incorporating Complainant’s established trademarks ZIONS BANK and ZIONSBANK.COM in their entireties. Complainant alleged and Respondents have not rebutted that the Respondents then used the Domain Name to exploit the resulting confusion to divert Internet users to Respondents’ website where Respondents provide links to products and services, some of which compete with those of Complainant and where Respondents presumably are able to earn click-through revenues. The Panel finds that Respondents intentionally created a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website, which indicates bad faith registration and use of the Domain Name under the Policy.
The record does not support Complainant’s other contentions concerning bad faith.
The Panel concludes that Complainant has established the third and final element of its case. 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 Domain Name be transferred to Complainant.
John R. Keys, Jr.
Sole Panelist
Date: July 16, 2013
1 There is an apparent error in Complainant’s allegation here. From the context of the sentence and the argument as a whole, Complainant must have intended to say that “Respondents are [not] a licensee of Complainant’s trademarks […]” and the Panel will read the sentence that way.
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