The Complainant is Zions Bancorporation of Salt Lake, Utah, United States of America ("U.S."), represented by Callister Nebeker & McCullough, U.S.
The Respondent is Liang Guangpu of Zhengzhou, Henan Province, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu Fly-Digital Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2014. On April 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 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.
On May 6, 2014, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 9, 2014, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English, and the proceeding commenced on May 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2014.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 4, 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, Zions Bancorporation, is a U.S. based bank holding company.
The Complainant owns numerous U.S. trademark registrations, including Registration No. 2,381,006 for the mark ZIONS BANK, registered on August 29, 2000; Registration No. 2,531,436 for the mark ZIONSBANK.COM, registered on January 22, 2002; and Registration No. 2,380,325 for the mark ZIONS, registered on August 29, 2000.
The Complainant promotes and offers its banking services, among others, by websites under domain names that consist of its ZIONS mark. For example: .
The disputed domain name was registered on February 19, 2014.
The disputed domain name used to resolve to a webpage which offered for sale goods bearing the OAKLEY trademark. Currently, the disputed domain name is inactive and resolves to an error webpage. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's trademark.
The Complainant further argues that the disputed domain name resolves to a website, which offers for sale prima facie counterfeit goods.
The Complainant further argues that the Respondent is not known by the disputed domain name and has no rights in the mark ZIONS.
The Complainant further argues that it has never granted or licensed the Respondent any rights in its trademarks in any manner.
The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant further contends that the Respondent uses the disputed domain name for commercial purposes, by creating a false impression that the disputed domain name is associated with the Complainant.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The Complainant's trademark and the disputed domain name are composed of words which are only recognized in the English language;
b) The disputed domain name used to resolve to a website which displayed content in the English language; and
c) The Respondent did not object to the Complainant's request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns numerous U.S. trademark registrations, including Registration No. 2,381,006 for the mark ZIONS BANK, registered on August 29, 2000; Registration No. 2,531,436 for the mark ZIONSBANK.COM, registered on January 22, 2002; and Registration No. 2,380,325 for the mark ZIONS, registered on August 29, 2000.
The disputed domain name integrates the Complainant's ZIONS trademark in its entirety, as a dominant element.
The disputed domain name differs from the registered ZIONS trademark by the additional descriptive words "direct" and "bonds", and the generic Top-Level Domain (gTLD) ".com".
The additional descriptive words "direct" and "bonds" do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark, as they are descriptive terms that relate to financial services offered by the Complainant. Previous UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate the domain name from the registered trademark: "[t]he only difference between the Disputed Domain Name and the trademark JACK WOLFSKIN is the addition of a suffix "jackets". This is directly descriptive of the goods of the Complainant. In line with established practice of past UDRP panels, the Panel accepts the Complainant's submission that the additional word "jackets" does not assist to distinguish the Disputed Domain Name from the Complainant's trademark JACK WOLFSKIN." (Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. lin feifang,WIPO Case No. D2012-1042).
The addition of the gTLD ".com" to the disputed domain name does not avoid confusing similarity (see
F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The gTLD ".com" iswithout legal significance in this case since it is used as a mere technical requirement to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its ZIONS trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that shall be considered evidence of bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the ZIONS trademark at least since the year 2000. It is suggestive of the Respondent's bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Panel also finds that the Respondent's attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant's trademarks and its affiliation with the Respondent's website falls under paragraph 4(b) of the Policy.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant's marks, the similarity between the disputed domain name and the Complainant's mark and the Respondent's use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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.
Jonathan Agmon
Sole Panelist
Date: June 15, 2014
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