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 Cameron David Jackson of Kingston, New South Wales, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , and are registered with Instra Corporation Pty Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 7, 2016. On April 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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 Complainant submitted an amendment to the Complaint adding the domain name to the dispute on April 14, 2016. The Registrar confirmed on April 15, 2016 that is registered to the Respondent.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2016. On that date the Respondent submitted a brief, non-substantive email communication to the Center. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on May 9, 2016.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 13, 2016. 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
Zions Bancorporation is the parent company of the Complainant, which does business under the name Zions First National Bank, and which in turn holds a number of different trademarks used variously in connection with the provision of banking and broadly related services, including among others investment services, investment advice, investment brokerage, investment management, maintaining escrow accounts, mortgage services, online banking, insurance agency, equipment financing services and electronic transactions.
The following are representative of the Complainant's trademarks:
AMEGY, United States Patent and Trademark Office (USPTO), principal register, registration number 3269288, registered July 24, 2007, class 36;
AMEGY BANK, USPTO, principal register, registration number 2979655, registered July 26, 2005, class 36;
AMEGYBANK (stylised), USPTO, principal register, registration number 3105196, registered June 13, 2006, class 36;
CALIFORNIA BANK & TRUST, USPTO, principal register, registration number 3041054, registered January 10, 2006, class 36;
CALIFORNIA BANK & TRUST (stylised), USPTO, principal register, registration number 2477581, registered August 14, 2001, class 36;
NSBANK, USPTO, principal register, registration number 4174370, registered July 17, 2012, classes 9, 42;
NEVADA STATE BANK, USPTO, principal register, registration number 2862148, registered July 13, 2004, class 36;
ZIONS, USPTO, principal register, registration number 2380325, registered August 29, 2000, class 36;
ZIONS BANK, USPTO, principal register, registration number 2381006, registered August 29, 2000, class 36;
ZIONSBANK.COM, USPTO, principal register, registration number 2531436, registered January 21, 2002, class 36.
The Complainant owns domain names including , , , and .
Nothing of substance is known about the business of the Respondent, who appears to be an individual with an Australian address. The Complainant and the Respondent have had dealings previously concerning a domain name. According to the WhoIs records the disputed domain names were created by the Respondent on the following dates:
March 29. 2016
March 24, 2016
March 24, 2016
March 28, 2016
April 7, 2016
March 28, 2016
November 14, 2015
March 29, 2016
March 29, 2016
March 29, 2016
March 29, 2016.
5. Parties' Contentions A. Complainant
The Complainant asserts ownership of the trademarks listed in section 4 above and has produced summary copies of their registration documents.
The Complainant submits that the generic Top Level Domain (gTLD), in this case ".xyz" or ".com", may generally be disregarded in the determination of confusing similarity.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's registered trademarks AMEGY, AMEGY BANK and AMEGYBANK. The disputed domain name incorporates the trademark AMEGY, or the dominant part of the trademarks AMEGY BANK and AMEGYBANK, with the addition of the generic term "corp", and is confusingly similar to those trademarks.
The Complainant says that the disputed domain names and incorporate the dominant part of the Complainant's registered trademarks for CALIFORNIA BANK & TRUST except for the omission from of the ampersand that forms part of the trademarks, and are confusingly similar to those trademarks.
The Complainant says it has registered the trademarks NSBANK, which is an abbreviation for Nevada State Bank, and NEVADA STATE BANK, and that the identical marks are included and recognisable in the disputed domain name , constituting confusing similarity.
The Complainant says that the disputed domain names , , , , , and (the "zions" disputed domain names) incorporate the dominant parts of the Complainant's registered trademarks ZIONS, ZIONS BANK or ZIONSBANK.COM. Zions Bancorporation is the parent of the Complainant, does business in the banking-related sector, and is the registrant of the domain names and .
The Complainant says the incorporation of the generic terms "insuranceagency," "managementservices" or "basketballcenter" into the respective "zions" disputed domain names does not distinguish them from the Complainan's trademarks. The disputed domain name is a reference to the practice facility used by the Utah Jazz of the National Basketball Association, which facility is branded as the Zions Bank Basketball Center.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The disputed domain name was acquired by the Respondent no earlier than March 29, 2016, whereas the Complainant's trademarks AMEGY, AMEGY BANK and AMEGYBANK were registered on July 24, 2007, July 26, 2005, and June 13, 2006, respectively, and were all in use in commerce on January 26, 2005.
The Complainant says the disputed domain names and were acquired by the Respondent no earlier than March 24, 2016, whereas the Complainant's trademark CALIFORNIA BANK & TRUST was first registered on August 14, 2001.
The Complainant says the disputed domain name was registered by the Respondent no earlier than March 28, 2016, whereas the Complainant's trademarks NSBANK and NEVADA STATE BANK were registered on July 17, 2012 and July 13, 2004, respectively, with first use in commerce by July 26, 2011 and December 1, 1959, respectively.
The Complainant says that the disputed domain names , , , , and were registered by the Respondent no earlier than March 28, 2016, March 29, 2016, March 29, 2016, March 29, 2016, March 29, 2016, November 14, 2015, and April 7, 2016, respectively, whereas the Complainant's trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM were registered on August 29, 2000, August 29, 2000, and January 21, 2002, respectively, with first use dating back to 1891, 1992 and 1996 respectively.
The Complainant states that, as far as it is aware, the Respondent has not used any of the disputed domain names in connection with a bona fide offering of goods or services; the Respondent is not commonly known by the disputed domain names; and the Respondent is not making a legitimate noncommercial or fair use of them.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith.
The Complainant says the use of the disputed domain names, being similar to the Complainant's trademarks, indicates that the disputed domain names were registered primarily for the purpose of disrupting the Complainant's business by taking advantage of the goodwill associated with Complainant's trademarks.
The Complainant says that the Respondent is intentionally creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the websites to which the disputed domain names resolve. The Respondent may use the disputed domain names in connection with "phishing" or other fraudulent activities.
The Complainant says that in email correspondence dated March 29, March 30 and March 31, 2016, the Respondent offered to sell variously another domain name and the disputed domain names (without reference to , which was registered later). The Complainant submits that an offer by a registrant to sell a domain name to the rights holder is generally admissible and may be evidence of bad faith. The email correspondence followed previous dealings in which the Complainant declined to pay USD 600 but agreed to pay USD 200 to the Respondent in exchange for a domain name.
The Complainant says with reference to the disputed domain name , that the Respondent has engaged in typosquatting.
The Complainant says its trademarks may be tarnished by the Respondent's use of them.
The Complainant has cited 14 previous cases under the UDRP in which it has prevailed.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not formally reply to the Complainant's contentions. 6. Discussion and Findings A. Procedural Matters
The Complainant provided the name "ZB, N.A., a national banking association". Since the Complainant states that it does business as Zions First National Bank, and the Complainant has brought UDRP complaints under that name previously, it was considered that the inclusion of Zions First National Bank would be more informative and consistent in the intituling.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The disputed domain name was added in an Amendment to the Complaint dated April 14, 2016, before the formal commencement of proceedings on April 18, 2016. The Panel is satisfied that the Respondent has not been disadvantaged by this late addition. The grounds for complaint are less comprehensively stated in respect of than for the other disputed domain names. However, the Amendment to the Complaint states, among other things, "Complainant hereby amends the Original Complaint filed in this matter to include the New Domain Name, and specifically, to amend the defined term "Domain Names" to include the New Domain Name". On that basis the Panel will treat all references to the disputed domain names as including where it is appropriate to do so. B. Identical or Confusingly Similar
In respect of each disputed domain name, the Complainant is required to have rights in a trademark that may be confusingly similar. The trademarks AMEGY, AMEGY BANK, AMEGYBANK, CALIFORNIA BANK & TRUST and NEVADA STATE BANK are not shown as registered to the Complainant or its parent on the registration documents submitted. The Complainant has, however, stated its ownership of these marks in the signed Complaint, certified as complete and accurate to the best of its knowledge, and the matter is uncontested. The Panel accepts for the purposes of this proceeding that the Complainant has the requisite rights in all the trademarks listed in section 4 above. In any event, in investigating the ownership of these marks, the Panel has found that the registered owners of the AMEGY, AMEGY BANK, AMEGYBANK, CALIFORNIA BANK & TRUST and NEVADA STATE BANK marks are within the Complainant's corporate family.
The gTLD component of a domain name, in this proceeding either ".xyz" or ".com", may generally be disregarded in the determination of confusing similarity. The disputed domain name incorporates the trademark AMEGY or the dominant component AMEGY of the trademarks AMEGY BANK and AMEGYBANK. The additional component "corp" in the disputed domain name is found not to be distinguishing and not to circumvent confusing similarity with the Complainant's trademarks.
The disputed domain name incorporates the dominant part of, and is found to be confusingly similar to, the Complainant's trademark CALIFORNIA BANK & TRUST. The disputed domain name is found to be effectively identical to the Complainant's trademark CALIFORNIA BANK & TRUST except for the omission, which the Panel finds to be inconsequential, of the ampersand that is not in any case permitted in a domain name.
The disputed domain name is found to be identical to the Complainant's trademark NEVADA STATE BANK. It is not necessary for the Panel to decide whether the disputed domain name is confusingly similar to the trademark NSBANK.
The disputed domain names , , , , , and are found to incorporate the entirety of the Complainant's trademark ZIONS and the dominant element ZIONS of the trademarks ZIONS BANK and ZIONSBANK.COM in a prominent manner that is sufficient to constitute confusing similarity.
Furthermore, the additional words present variously in the "zions" disputed domain names are found to exacerbate confusing similarity to the Complainant's trademarks and not to be distinguishing. In particular, the addition of "bancorporation" or "bancorporations" after ZIONS is found to enhance confusing similarity with the Complainant's trademarks by alluding to Zions Bancorporation, the parent company of the Complainant. The addition of "managementservices" or "managementservicesco" alludes to the provision of management services, such as are within the business the Complainant. The addition of "insuranceagency" impinges on the insurance services provided by the Complainant. The disputed domain name , which incorporates entirely the Complainant's trademarks ZIONS and ZIONS BANK and the additional words "basketball" and "center", is found to be likely, in the context of the Complainant's branding associated with the Zions Bank Basketball Center, to exacerbate confusion between that disputed domain name and the Complainant's trademarks.
The Panel finds all the disputed domain names to be confusingly similar to trademarks in which the Complainant has rights, and accordingly finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent does not have rights or legitimate interests in the disputed domain names, which were registered by the Respondent some years after the Complainant's trademarks.
In particular, on the evidence, the disputed domain name was acquired by the Respondent no earlier than March 29, 2016, whereas the Complainant's trademarks AMEGY, AMEGY BANK and AMEGYBANK were registered on July 24, 2007, July 26, 2005 and June 13, 2006, respectively.
On the evidence, the disputed domain names and were acquired by the Respondent no earlier than March 24, 2016, whereas the Complainant's trademark CALIFORNIA BANK & TRUST was first registered on August 14, 2001.
On the evidence, the disputed domain name was registered by the Respondent no earlier than March 28, 2016, whereas the Complainant's trademark NEVADA STATE BANK was registered on July 13, 2004.
On the evidence, the disputed domain names , , , , , and were registered by the Respondent no earlier than March 28, 2016, March 29, 2016, March 29, 2016, March 29, 2016, March 29, 2016, November 14, 2015 and April 7, 2016 respectively, whereas the Complainant's trademarks ZIONS and ZIONS BANK were registered on August 29, 2000, and ZIONSBANK.COM was registered on January 21, 2002.
The Panel is satisfied that in no instance was a disputed domain name registered prior to any trademark of the Complainant with which it may conflict.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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".
The Respondent has not responded formally and has not asserted rights or legitimate interests in the disputed domain names with reference to paragraph 4(c) of the Policy or otherwise. There is no evidence before the Panel of the Respondent's use or intended use of any of the disputed domain names in connection with a bona fide offering of goods or services; or that the Respondent is commonly known by any of the disputed domain names; or that the Respondent is making a legitimate noncommercial or fair use of any of them.
The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that each disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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 website or location or of a product or service on your website or location".
The provisions of paragraph 4(b) of the Policy above are without limitation.
Emails from the Respondent to the Complainant dated March 29, March 30 and March 31, 2016, were each headed "WITHOUT PREJUDICE". The Respondent may have expected that these emails could not be produced in evidence in a proceeding under the Policy.
The "without prejudice" rule is a common law concept of some complexity not necessarily recognised in the same way in the legal systems of all who may be parties to proceedings under the Policy. The admissibility or otherwise of "without prejudice" communications in proceedings under the Policy has been analysed in depth by, among others, the panelist in The Vanguard Group, Inc. v. Emilio Sa,WIPO Case No. D2001-1453 ("Vanguard").
In the Vanguard decision the panelist itemised 17 points of reason that had been considered by panelists in other UDRP cases as to why communications marked "without prejudice" need not be accorded privileged status in proceedings under the Policy. Of particular relevance to the present case are (as stated in Vanguard): "Where a Respondent fails to object to the inclusion of such evidence by failing to file a Response" (Hang Seng Data Services Ltd. v. Power M Investment Ltd.,WIPO Case No. D2000-0653); and "Where an offer to sell the Domain Name for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name is not only evidence of, but conclusively establishes that the Domain Name has been registered and is being used in bad faith" (CBS Broadcasting Inc. v. Gaddoor Saidi,WIPO Case No. D2000‑0243). Furthermore (as stated in Vanguard): "Panels are fully capable of assessing whether an offer of sale reflects a good faith effort to compromise or part of a bad faith effort to extort" (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.WIPO Case No. D2000-1525).
Having considered the arguments in previous cases including Vanguard and McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited, Maxol Lubricants Limited, Maxol Oil Limited, Maxol Direct (NI) Limited v. Web Names Ltd,WIPO Case No. D2004-0078, the Panel finds no reason to exclude the content of the three emails sent by the Respondent marked "WITHOUT PREJUDICE". The Respondent, having had the opportunity to read the Complaint, has raised no objection to their admission. The emails were focused on the possible sale of the disputed domain names from the Respondent to the Complainant and they go to the heart of the Complaint.
The Panel also notes in this regard paragraph 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"): "Evidence of offers to sell [a] domain name are generally admissible under the UDRP".
The first email, dated March 29, 2016, was in reply to an email from the Complainant about a previous transaction over a domain name, and read in substance: "Yes I am more than happy to transfer the domain name to you. But other banks and financial institutions l have dealt with are willing to pay more than $200 US so that figure is a little light on. But i also wish to avoid wipo so lets work out a swift and amicable solution. l gave you that zions name at $200 US as a favour or gesture".
The second email dated March 30, 2016, read in essence: "I have some other associated domain names that you might be interested in to make it easier for you John do you just want me to send you the whole list?"
The third email dated March 31, 2016, listed the 10 disputed domain names initially subject to the present Complaint (and another domain name) prior to the addition of as an Amendment to the Complaint, and ended with: "John I am happy to reach an agreement with you and transfer them all to you. I also have two chinese parties keen on acquiring all of these names. Apparently chinese like bank names for some reason. So John I await your response", and a signoff.
Whilst various possible uses for the disputed domain names may have been in the Respondent's mind, the use for which these emails provide the evidence is their potential sale to the Complainant or to competitors of the Complainant (e.g., "Chinese parties"). It is clear from the Respondent's emails that a price of USD 200, such as was accepted in a previous transaction "as a favour or gesture", is now seen by the Respondent as too low. The Respondent describes USD 200 as "a little light on" and asserts that others may be willing to pay more, including Chinese parties who it is claimed are specifically interested. In the context of the Respondent's manoeuvrings around the previous sale price having been cheap, and hints of the presence of Chinese interests, the Panel is indeed "fully capable of assessing whether an offer of sale reflects a good faith effort to compromise or part of a bad faith effort to extort" (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., supra).
The Respondent has not offered any explanation for having registered 11 disputed domain names embodying the trademarks of banks, and the Panel can foresee no plausibly legitimate purpose in the Respondent having done so. On the evidence and on the balance of probabilities, the Panel finds the Respondent to have registered each of the disputed domain names primarily for the purpose of transferring it to the Complainant or a competitor of the Complainant for a price in excess of documented out of pocket costs directly related to the domain name. Accordingly the Panel finds that the Respondent has registered the disputed domain names in bad faith in the terms of paragraph 4(b)(i) of the Policy.
Paragraph 4(a)(iii) of the Policy also requires the Complainant to prove that each disputed domain name was used in bad faith. The Respondent's omission to put the disputed domain names to any substantive use does not preclude a finding of use in bad faith. On the evidence, the disputed domain names are found to have received the usage of being taken into stock by the Respondent and offered for sale to the Complainant or a competitor, with the exception of the recently registered (see below).
Furthermore, the criteria of bad faith registration and use set out in paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively. Whilst previous cases under the Policy do not have the status of precedent, many panels have followed the guidelines set out in the early case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 ("Telstra"), in which it was held that passive holding of a domain name with no usage or minimal usage can in certain circumstances constitute use in bad faith. With certain of the criteria discussed in Telstra in mind, the Panel concludes from the evidence that the Respondent has intentionally appropriated trademarks of a well-established family of banks into the disputed domain names; that there is no evidence of actual or intended good faith use of the disputed domain names by the Respondent; and that it is not reasonably possible to conceive of any legitimate use by the Respondent of the disputed domain names. Having regard to all the evidence the Panel finds on balance that the disputed domain names have been used in bad faith.
The Complainant said in the Amendment to the Complaint that the disputed domain name takes advantage of "users seeking to find Complainant's domain name and the services offered at that site", constituting typosquatting; however, is in fact registered to the Respondent (and is among the disputed domain names). Nevertheless the Panel is satisfied on the balance of probabilities, having regard to all the evidence and to the Respondent's relevant pattern of conduct, that the disputed domain name was registered and used by the Respondent with intentions identical to those found to have applied to all the other disputed domain names in this case.
The Panel finds all the disputed domain names in this case to have been registered and used in bad faith in the terms 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 names , , , , , , , , , and be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: May 19, 2016
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