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 Domain Administrator, Fundacion Private Whois of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with I Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2014. On March 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2014, the Registrar 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 April 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 28, 2014.
The Center appointed David Taylor as the sole panelist in this matter on May 6, 2014. 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 the owner of several trademark registrations with the United States Patent and Trademark Office (USPTO), including: ZIONS BANK, Registration No. 2,381006 (registered on August 29, 2000, first use in 1992); ZIONSBANK.COM, Registration No. 2,531,436 (registered on January 22, 2002, first use in 1995) and ZIONS, Registration No. 2,380,325 (registered on August 29, 2000, first use in 1891). These trademarks are registered and used in connection with, inter alia, financial services, namely banking.
The Complainant has also been the registrant of the domain name since 1995, from which the Complainant advertises and offers its banking services.
The Domain Name was created on April 14, 2003.
The Domain Name resolves to a parking page containing a variety of sponsored links related to financial services and banking. 5. Parties' Contentions A. Complainant
The Complainant argues that the Domain Name contains a name that is highly similar or identical to the Complainant's registered trademarks ZIONS BANK, ZIONSBANK.COM and ZIONS and that the "www" does not distinguish the Domain Name from the Complainant's trademarks. The Complainant also argues that the Domain Name is identical to "www.", except for the period between "www" and "zionsbank".
The Complainant further asserts that the Respondent does not have rights or legitimate interests in the Domain Name. The Complainant states that the Respondent is not a licensee of the Complainant and has not been otherwise authorized by the Complainant to use its trademark. The Complainant further argues that the Respondent's use of the Domain Name for a "banking-related search queries that direct consumers to the websites of third party" is not part of a bona fide offering of goods or services. In addition, the Complainant argues that the use of the Complainant's trademark in the Domain Name and on the Respondent's website is misleading and may divert consumers to the Respondent's website instead of the Complainant's official website. The Complainant also argues that the Respondent may use the website associated with the Domain Name in connection with various phishing and fraudulent activities.
The Complainant further argues that the Respondent registered and is using the Domain Name in bad faith. According to the Complainant, the use of the Complainant's identical or similar marks in the Domain Name for a website that provides direct or indirect links to various banking related and other search queries, indicates that the Domain Name was registered primarily for the purpose of disrupting the Complainant's business. The Complainant further argues that the Respondent is using the Domain Name to divert customers of the Complainant from the Complainant's website to the Respondent's website by creating a likelihood of confusion with the Complainant's mark 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
Paragraph 15 of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 10 of the Rules further provides that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence. Paragraph 14 of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Respondent's failure to respond does not automatically result in a decision in favour of the Complainant. However, the Panel may draw appropriate inferences from the Respondent's default.
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove that each of the following elements is present:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel shall therefore proceed to examine whether the Complainant has discharged the burden of proof in respect of each of the aforementioned three elements and decides as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider whether the Complainant has rights in a trademark or service mark to which the Domain Name is identical or confusingly similar. The Complainant has provided copies of its trademark registrations with the USPTO. The Panel is therefore satisfied that the Complainant has rights for the purpose of this first hurdle.
The Panel is also required to examine whether the Domain Name is identical or confusingly similar to the Complainant's trademark. The Panel observes that the Domain Name identically reproduces the Complainant's ZIONS BANK trademark with the mere addition of "www". The Panel accepts the Complainant's contention that the "www" does nothing to distinguish the Domain Name from the Complainant's trademark. See General Electric Company v. mr domains (Marcelo Ratafia),WIPO Case No. D2000-0594. Furthermore, it is widely accepted that the generic Top-Level Domain ("gTLD"), such as ".com", is generally irrelevant for the purpose of assessing confusing similarity between a trademark and a domain name.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent's] 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the Domain Name, even if [the respondent] ha[s] acquired no trademark or service mark rights; or
(iii) [the respondent] is 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."
Whilst the burden of proof rests with the complainant, it is often difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted that a complainant must first show a prima facie case that a respondent lacks rights or legitimate interests in the domain name, and then this burden shifts to the respondent.
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in the Domain Name and that the Respondent has failed to rebut such showing as a result of its default.
The Panel finds that there is no evidence suggesting that the Respondent is commonly known by the Domain Name or that it has been authorised by the Complainant to use the Complainant's trademark.
The Panel further finds that the Respondent's use of the Domain Name incorporating in its entirety the Complainant's trademark to point to a parking website containing sponsored links related to banking and financial activities - the Complainant's same business activity - cannot be considered either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name as the Respondent is unduly profiting from the Complainant's goodwill by misleading Internet users to its website.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances that may indicate that a domain name was registered and used in bad faith:
(i) circumstances indicating that [the respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location..
The Complainant has submitted evidence showing that its ZIONS BANK trademark has been used extensively and long before the registration of the Domain Name. The Panel is therefore of the view that the Respondent was aware of the Complainant and its rights at the time of registration of the Domain Name, and thus registered the Domain Name in bad faith seeking to profit from the Complainant's goodwill and renown.
The Panel is also of the view that the inclusion of the "www" prefix in the Domain Name has been a deliberate attempt by the Respondent to take advantage of a common mistake made by Internet users searching for the Complainant's official website at "www." and thus a strong indication of the Respondent's bad faith at the time of registration. See Schering-Plough Corporation, Schering Corporation, Schering Plough Ltd. v. Stementali Quemistas,WIPO Case No. D2009-0841 (the panel held that "Because many domain names begin with "www" followed by a period followed by the name of the web site, the disputed domain name is calculated to divert Internet traffic of end users seeking to find the website of Complainant, who accidentally omit the period after the "www" prefix. This is a classic case of typosquatting. See, National Association of Professional Baseball Leagues, Inc., d/bla Minor League Basebal; Lexar Media, Inc.; and Identigene, Inc., supra. Respondent's registration is intended to disrupt and divert Complainant's business and such registration was undertaken in bad faith").
The fact that the Respondent is using the Domain Name for a parking page containing commercial links which relate to the Complainant's same business activity and from which the Respondent or a third party is undoubtedly obtaining financial gain is further evidence of bad faith, given that the Respondent or a third party is unduly profiting from the Complainant's goodwill and renown. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel also finds that the Respondent's use of a privacy shield to register the Domain Name is in the circumstances of this case additional evidence of the Respondent's bad faith. The Panel is of the view that there is no reason that could explain why the Respondent would need to protect its identity by means of a privacy shield for a parking website "except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting. In circumstances like this, the privacy shield may also allow registrants to transfer domain name registrations amongst themselves without any public record that there has been a transfer, thus allowing them to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy". See Ustream.TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598.
Finally, the Panel also finds that the Respondent's failure to respond to the Complaint is another element supporting the Respondent's bad faith.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith in accordance with 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 Domain Name be transferred to the Complainant.
David Taylor
Sole Panelist
Date: May 20, 2014
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