The Complainant is Zions Bancorporation of Salt Lake City, Utah, United States of America (“USA”), represented by Callister Nebeker & McCullough, USA.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, USA / George Washere, of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (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 disputed domain name. On May 17, 2013, 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 May 27, 2013 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 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 the Respondent 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2013.
The Center appointed George R. F. Souter as the sole panelist in this matter on July 3, 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
The Complainant is a US banking corporation. It is the owner of various US Federal trademark registrations relating generally to banking services, namely ZIONS BANK, Registration No. 2,381,006, ZIONSBANK.COM, Registration No. 2,531,436, and ZIONS, Registration No. 2,380,325.
The disputed domain name was registered on March 3, 2013. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its registered trademarks identified above.
The Complainant alleges that the Respondent is not a licensee of Complainant’s trademarks, and has not
otherwise obtained authorization to use Complainant’s marks, and that the Respondent is not using the disputed domain name as part of a bona fide offering of goods or services, but appears to be using the disputed domain name to provide various banking-related search queries that direct consumers to the
websites of third parties.
The Complainant alleges that the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names of the Respondent be transferred to the Complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trade mark and a domain name. The Panel agrees with this view and considers these indicators to be irrelevant in the present case.
The text of the disputed domain name is only marginally different from the Complainant’s trademark ZIONS BANK plus a minor misspelling of the non-distinctive and descriptive word “corporation”. It appears to the Panel that this misspelling was probably deliberate, as it is the only difference between the text of the disputed domain name and the text of the domain name , which the Complainant has been using since its registration in 1999 to provide information about its family of banks offering banking and financial services. It is well-established in decisions under the UDRP that the addition of non-distinctive and descriptive elements to an established trade mark is insufficient to avoid a finding of confusing similarity between the complainant’s trade mark and the disputed domain name ( e.g. F. Porsche AG v. Glenn Stefan Karlsson-Springare,WIPO Case No. D2011-1727, and many others). The Panel agrees with this well-established view, and finds that this single letter omission from the word “corporation” is insufficient for the Panel not to regard it as a non-distinctive or descriptive word. The Panel is of the view that the overall impression conveyed by the text “zionsbancoporation” is confusingly similar to the text “Zions Bank Corporation”, and, accordingly, finds that the Complainant has satisfied the test set out in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Where the respondent has failed to demonstrate rights or legitimate interests in the domain name, it is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy.
The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that, in the case of an established trade mark such as ZIONS BANK, the finding that the Respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The circumstances of the present case, particularly the Panel’s extreme suspicion as to the almost perfect coincidence between as used by the Complainant and as used by the Respondent, are such as to convince the Panel to find that the disputed domain name was registered in bad faith.
The use of the Respondent’s website operated under the disputed domain name to provide various banking-related search queries that direct consumers to the websites of third parties, to the possible detriment of the Complainant, is clearly use in bad faith. The Panel, accordingly, finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
George R. F. Souter
Sole Panelist
Date: July 17, 2013
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