The Complainant is Zions First National Bank of Salt Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America.
The Respondent is Xu Shuaiwei of Kunming, Yunnan, China / Domain Administrator, See PrivacyG of Phoenix, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2015. On July 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 10, 2015, the Registrar transmitted by email to the Center its verification response indicating that its privacy service was removed and disclosing the 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 July 13, 2015 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 amendment to the Complaint on July 17, 2015.
The Center verified that the Complaint together with the amendment to 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 July 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2015.
The Center appointed Tan Tee Jim S.C. as the sole panelist in this matter on August 20, 2015. 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 in this administrative proceeding is Zions First National Bank, a national banking association, with its place of business in Salt Lake City, Utah, United States of America.
The Complainant is the owner of the following service marks registered with the United States Patent and Trademark Office (“USPTO”) (the “Registered Marks”):
1. ZIONS BANK, Registration No. 2,381,006, dated August 29, 2000, in respect of financial services in class 36 (namely, banking, mortgage lending and banking, trusteeship representatives, investment management services, escrow services, namely holding stock certificates until paid, estate and probate trust management, federal and municipal bond underwriting services and federal and municipal bond brokerage services, financial analysis and consultation, and bond private placements, namely finding and arranging for purchasers to buy bonds and advising municipalities on bond structuring);
2. ZIONSBANK.COM, Registration No. 2,531,436, dated January 22, 2002, in respect of financial services in class 36 (namely, financial services namely banking); and
3. ZIONS, Registration No. 2,380,325, dated August 29, 2000, in respect of financial services in class 36 (namely, banking, securities brokering, mortgage lending and banking, trusteeship representatives, investment management services, escrow services, namely holding stock certificates until paid, estate and probate trust management, insurance agencies and brokerage in the fields of property, casualty, life, health and disability insurance and bonding services, federal and municipal bond underwriting services and federal and municipal bond brokerage services, bond private placements, namely finding and arranging for purchasers to buy bonds, lease-purchase financing, and financial analysis and consultation).
The Complainant also owns the following domain name incorporating the ZIONS BANK and ZIONSBANK.COM service marks, namely registered on July 5, 1995 (the “Complainant’s Domain Name”).
The Complainant has submitted evidence of the registration of the three service marks in the USPTO and this Panelist has verified the date of registration of the domain name through his own independent search on the WhoIs database.
The subject matter of the dispute is the domain name , registered on April 25, 2012. The Disputed Domain Name previously resolved to a landing page indicating that the Disputed Domain Name was available for sale and displaying the word “bank”, in addition to featuring sponsored links. As of the date of this decision, the Disputed Domain Name resolves to a parking page offering domain names for sale by the Registrar.
Not much is known about the Respondent as the Respondent has chosen not to reply to the Complainant’s contentions. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant submits principally that:
1. The dominant part of the Disputed Domain Name contains a name that is virtually identical to the Complainant’s Registered Marks and is otherwise confusingly similar to these marks. The only difference between the Disputed Domain Name and the Complainant’s Domain Name is the omission of “i” in the word “zions”.
2. The Respondent is engaging in “typosquatting”, thereby intending to take advantage of users who seek to find the Complainant’s website and the services offered at that site, but who mistakenly type the domain name with one less letter.
3. There is a risk that Internet users may believe that there is a connection between the Disputed Domain Name and the Complainant’s products and services.
4. By using a second level domain name that is virtually identical to the dominant portion of the Complainant’s Registered Marks in the Disputed Domain Name, the Respondent is intentionally creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits principally that:
1. The Respondent is not affiliated with the Complainant. It is not a licensee of the Registered Marks and has not obtained authorization to use the Complainant’s marks.
2. The Respondent is not using the Disputed Domain Name as part of a bona fide offering of goods or services, or for a legitimate noncommercial use. Reference is also made to paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) wherein it is stated that previous UDRP panels have generally recognized that “use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fideoffering of goods or services’ … or from ‘legitimate noncommercial or fair use’ of the domain name” .
The Disputed Domain Name was registered and is being used in bad faith.
The Complainant submits principally that:
1. The use of virtually identical or similar marks in the Disputed Domain Name indicates that the Disputed Domain Name was registered primarily for the purpose of disrupting the business of the Complainant, and appears to be intended to take advantage of the goodwill associated with the Registered Marks.
2. The Respondent is trying to exploit the goodwill of the Complainant and its trade marks by diverting customers of the Complainant from the Complainant’s website to the Respondent’s website for commercial gain or malicious purposes by creating a likelihood of confusion with the Complainant’s trade marks.
3. The Complainant has prevailed in prior UDRP complaints for domain names virtually identical or similar to the Complainant’s trade marks (see e.g., Zions Bancorporation v. Domain Administrator, Fundacion Private Whois, WIPO Case No. D2014-0465 and Zions Bancorporation v. Whois Privacy Service Pty Ltd/Mike Patterson,WIPO Case No. D2013-0866). Both cases relate to typosquatting and should therefore be given consideration for consistency. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Applicable Rules
To warrant relief, the Complainant must demonstrate that the three elements set out in paragraph 4(a) of the UDRP have been satisfied. They are:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Panel wishes to mention that it has cognizance of the following paragraphs in the Rules:
1. Paragraph 10(b) of the Rules provides that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Paragraph 10(d) further provides that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
2. Paragraph 14(a) of the Rules provides that in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint. Paragraph 14(b) of the Rules further provides that if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
3. Paragraph 15(a) of the Rules provides that the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the Rules and any rules and principles of law that it deems applicable.
In the present case, the Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraph 14(a) of the Rules, the Panel shall proceed to a decision on the Complaint based on the statements and documents submitted by the Complainant, in accordance with the UDRP, the Rules and any rules and principles of law that it deems applicable. Burden of Proof and Standard of Proof
The Panel is cognizant that the Respondent’s default does not automatically result in a decision in favour of the Complainant and the overall burden of proof still rests with the Complainant to satisfy the requirements set out in paragraph 4(a) of the UDRP on the balance of probabilities. The Complainant would need to establish that it is more likely than not that the claimed fact is true (see WIPO Overview 2.0, paragraphs 4.6 and 4.7).
Paragraph 2.1 of the WIPO Overview 2.0 states that the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests to the Disputed Domain Name. Once such prima facie case is made, the burden shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such allegations or evidence, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the UDRP requires the Panel to consider whether the Complainant has rights in a trade mark or service mark to which the Disputed Domain Name is identical or confusingly similar.
The Complainant’s rights in the marks and domain names relied upon to establish its claim
Based on the evidence submitted by the Complainant, namely the USPTO Registration Certificates for the marks ZIONS BANK, ZIONSBANK.COM, and ZIONS, the Panel finds that the Complainant is indeed the owner of the Registered Marks.
As regards the Complainant’s Domain Name, the Panel notes that the Complainant did not tender any evidence showing its ownership of the said domain name. Nevertheless, it is generally accepted that a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision (see e.g., Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V.,WIPO Case No. D2011-0057). This may include resources such as:
1. Domain name registrars’ WhoIs databases and historical WhoIs databases;
2. Websites associated with the domain names and websites linked from those websites to establish how and by whom the domain names are used;
3. Historical versions of websites associated with domain names, prominently those available through the Internet Archive’s “Wayback Machine”; and
4. Other websites and social media pages operated by parties or their associates, as well as advertising, press releases, and other public statements by the parties, especially where these tend either to corroborate or impeach the parties’ statements in a UDRP proceeding, reveal an admission against interest, or furnish information about an absent respondent.
In this regard, the Panel has taken note of the following matters in finding that the Complainant is the owner of the Complainant’s Domain Name:
1. The Complainant is the owner of the ZIONSBANK.COM mark;
2. Independent WhoIs searches by the Panel corroborates the submissions of the Complainant that the Complainant’s Domain Name has been registered since July 5, 1995; and
3. The Complainant’s Domain Name resolves to a website where the Complainant offers its services. Comparison of Marks
To establish confusing similarity, the Complainant’s Registered Marks should be recognizable as such within the Disputed Domain Name. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the Complainant’s Registered Marks with the second level domain name of the Disputed Domain Name.
It is also well-established that a generic Top-Level Domain (“gTLD”) (i.e. “.com”) should typically not be taken into consideration for the purposes of evaluating whether a disputed domain name is identical or confusingly similar to the complainant’s marks in question. Further, a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to the trade mark if the misspelt trade mark remains the dominant or principal component of the domain name (see e.g., Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302; Zions Bancorporation v. Whois Privacy Service Pty Ltd / Mike Patterson,WIPO Case No. D2013-0866). Such a phenomenon is often referred to as “typosquatting”.
In the present case, the Panel agrees with the Complainant that the dominant part of the Disputed Domain Name contains a name that is confusingly similar to the Complainant’s Registered Marks and the Complainant’s Domain Name too. This is because the Disputed Domain Name only differs from the marks by the omission of an “i” in the word “zions”.
It is conceivable that an Internet user searching for the Complainant’s website may erroneously miss out the letter “i” when keying in the Complainant’s Domain Name or making an Internet search. This would have the effect of redirecting traffic meant for the Complainant’s website to the Respondent’s.
The Panel therefore finds that paragraph 4(a)(i) of the UDRP is satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the UDRP requires the Panel to consider whether the Respondent has rights or legitimate interests in respect of the Disputed Domain Name.
The Panel notes that the Complainant has submitted the following evidence to show that the Respondent does not have any rights and legitimate interests in the Disputed Domain Name:
1. A screen capture of the landing page of the Disputed Domain Name which appears to be a parking page displaying sponsored links (or pay-per-click links);
2. A representation from the Complainant that the Respondent is not a licensee of the Registered Marks and has not obtained authorization to use the Complainant’s marks;
3. Certificates of registration evidencing that the Complainant has used its ZIONS mark since 1891 and its ZIONS BANK mark since 1992, and the Complainant’s ZIONSBANK.COM mark has been registered since 2002; and
4. A print-out of the WhoIs database evidencing the registration of the Disputed Domain Name in 2012.
The Panel is able to infer from the screen capture of the landing page of the Disputed Domain Name submitted by the Complainant that the Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial use of the Disputed Domain Name.
Based on the said screen capture provided by the Complainant as well as the Panel’s independent research into past versions of the webpage that the Disputed Domain Name resolved to, the Panel is of the view that the Respondent is parking the Disputed Domain Name with a domain name parking service. As the panel in Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364 explains:
“A domain name owner ‘parks’ the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name.”
Paragraph 2.6 of the WIPO Overview 2.0 states that prior UDRP panels have generally taken the view that “use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fideoffering of goods or services’ … or from ‘legitimate noncommercial or fair use’ of the domain name” . This Panel agrees with this view.
In the premises, the Panel is satisfied that the Complainant has provided sufficient evidence to establish a prima facie case that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name.
It follows that the burden shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. In this regard, the Panel infers from the absence of any evidence of any affiliation between the Complainant and Respondent, and the fact that the Respondent has not come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the Disputed Domain Name, that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the UDRP requires the Panel to consider whether the domain name has been registered and used in bad faith. Paragraph 4(b) of the UDRP sets out a non-exhaustive list of circumstances evidencing the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark 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 domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
In the instant case, the following circumstances suggest bad faith registration and use of the Disputed Domain Name by the Respondent:
1. The landing page of the Disputed Domain Name is merely a domain name parking page containing sponsored links and an offer to sell the Disputed Domain Name;
2. The Respondent had chosen not to respond to the Complainant’s contentions despite the possibility of the Disputed Domain Name being transferred to the Complainant as a result of this UDRP proceeding;
3. The Disputed Domain Name merely differs from the Complainant’s Domain Name and the Registered Marks by one letter; and
4. The Respondent used a privacy service to conceal his identity.
As noted by the panel in a previous UDRP case (namely, Zions Bancorporation v. Domain Administrator, Fundacion Private Whois,WIPO Case No. D2014-0465) instituted by the Complainant concerning a similar allegation of typosquatting against the respondent:
“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.”
Given that the circumstances in the present case are largely similar to those in the above-mentioned case, this Panel is of the view that the findings in the case are persuasive. In this regard, paragraph 3.3 of the WIPO Overview 2.0 indicates that prior UDRP decisions dealing with similar fact situations may be given weight to ensure that the UDRP system operates in a fair, effective and predictable manner for all parties.
In the premises, this Panel is satisfied that the Complainant has successfully proven on the balance of probabilities that paragraph 4(a)(iii) of the Policy is met and in particular that paragraphs 4(b)(i) and (iv) of the UDRP apply. 7. Decision
For the foregoing reasons, and 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.
Tee Jim Tan
Sole Panelist
Date: September 3, 2015
Full & Egal Universal Law Academy