The Complainant is ZB, N.A., dba Zions First National Bank of Salt Lake City, Utah, United States of America, represented by TechLaw Ventures, PLLC, United States of America (“U.S.”).
The Respondent is Lee Houchang of Ningyang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2016.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on July 18, 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
The Complainant is a bank organized under United States Federal Law and has, since June 12, 1890, carried on business under the name of “Zions First National Bank”. The Complainant offers an extensive range of banking and financial services, in respect of which it has registered and used at least three U.S. trademarks, namely:
Country/Territory
Registration No.
Mark
Classes
Date of Registration
United States
2381006
ZIONS BANK
36
August 29, 2000
United States
2531436
ZIONSBANK.COM
36
January 22, 2002
United States
2380325
ZIONS
36
August 29, 2000
Since July 5, 1995, Zions Bancorporation, the parent company of Complainant, has been the registrant of the domain name , as stated in Annex 5 of the Complaint, advertising its business and supplying certain online services through that website.
The disputed domain name, , was registered on May 18, 2016. Prior to its suspension, the disputed domain name resolved to a website or holding page that appeared to display the Complainant’s marks and purportedly linked to competing financial services. 5. Parties’ Contentions A. Complainant
The Complainant seeks relief in the form of transfer of the disputed domain name to the Complainant in accordance with paragraph 4(i) of the Policy, on the following grounds:
First, a comparison of the disputed domain name with the Complainant’s registered marks ZIONS, ZIONS BANK, and ZIONSBANK.COM shows that the marks were recognizably in the disputed domain name, save for the use of the letter “d” in place of the letter “s”. The Complainant alleges that this appears to be a deliberate misspelling calculated to attract Internet users who have mistyped the Complainant’s domain name to the Respondent’s website – a practice known as “typo-squatting”.
Secondly, the Complainant refers to paragraphs 1.2 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) to demonstrate the test for determining how a relevant trademark would be deemed “recognizable” within a domain name, and the Complainant contends that the difference between the relevant trademarks and the disputed domain name is insufficient to prevent the likelihood of Internet user confusion.
Thirdly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because, inter alia:
(a) The Respondent registered the disputed domain name no earlier than May 18, 2016, compared with the Complainant’s established history vis-à-vis its marks;
(b) There is no evidence that the disputed domain name was used for a bona fide offering of goods or services, or for a noncommercial or fair use;
(c) There is no evidence that the Respondent was commonly known by the disputed domain name; and
(d) There is no evidence to suggest that the Respondent owns any trademark or other intellectual property rights in the disputed domain name or has been licensed to use the disputed domain name by the Complainant.
Finally, the Complainant alleges that the Respondent had registered and used the disputed domain name in bad faith, because the dominant part of the disputed domain name is identical or confusingly similar to the Complainant’s registered mark ZIONS, and such use by the Respondent indicates that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, to take advantage of the goodwill associated with the Complainant’s federally registered trademarks, or otherwise to intentionally create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Since the Respondent failed to file a Response, the Panel will issue its decision on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw appropriate inferences in accordance with paragraph 14(b) of the Rules.
The Complainant must demonstrate, and has the burden to prove, that each element of paragraph 4(a) of the Policy has been satisfied, in order to prevail. These are:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of such disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has duly proven it has rights in the ZIONS, ZIONS BANK and ZIONSBANK.COM marks and that the disputed domain name is confusingly similar to those marks.
The Panel agrees that the dominant part of the disputed domain name contains the entirety of the Complainant’s ZIONS and ZIONSBANK.COM marks excepting the replacement of the letter “s” for the letter “d”. The Panel holds that the replacement of a single letter in this case is not significant enough to create a distinct domain name, given that the Complainant’s marks ZIONS and ZIONSBANK.COM are still easily recognizable in the disputed domain name.
Similarly, the panel in Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775, found that the deliberate misspelling of “Wachovia” as , replacing the letter “a” with an “o”, was insufficient to avoid a finding of confusing similarity.
This Panel subscribes to the consensus view at paragraph 1.2 of the WIPO Overview 2.0 which states that “a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name”.
Accordingly, the Panel finds that the Complainant has met the requirements of paragraph 4(a)(i) of the UDRP. B. Rights or Legitimate Interests
It is well settled that a complainant may put forward a prima facie case that the respondent lacks rights or legitimate interests in a domain name in order to satisfy the requirement of UDRP paragraph 4(a)(ii). The burden of production then shifts to the respondent to rebut that prima facie case. See Universal City Studios, Inc. v. G.A.B. Enterprises,WIPO Case No. D2000-0416.
The Panel is satisfied with the evidence adduced by the Complainant in support of its prima facie case. This evidence includes:
(a) a screen-grab of the website linked to the disputed domain name on which appears sponsored links in Annex 6 of the Complaint;
(b) the Complainant’s representation to this Panel that the Respondent is not a licensee of the Complainant’s registered marks and has not otherwise been authorized to use the Complainant’s marks;
(c) productions of trademark certificates evidencing that the Complainant has used its ZIONS mark since 1891, its ZIONS BANK mark since 1992, and that its ZIONSBANK.COM mark has been registered since 2002 in Annex 4; and
(d) a production of the WhoIs records for the disputed domain name dated May 25, 2016.
The Complainant’s trademark registration certificates, the authenticity and validity of which have not been questioned, and the Complainant’s goodwill in relation to the ZIONS, ZIONS BANK and ZIONSBANK.COM marks, are accepted.
The Panel also notes that while the Complainant has demonstrated a history of using its ZIONS, ZIONS BANK and ZIONSBANK.COM marks since the early 2000s, the disputed domain name was registered by the Respondent no earlier than May 18, 2016. Thus the Complainant had rights and interests in the trademarks prior to the registration of the disputed domain name by the Respondent.
This Panel is persuaded by the finding in Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221, which held that a respondent’s failure to submit a response can be construed as an admission that it has no rights or legitimate interests in the disputed domain name.
Here, the Respondent had an opportunity to adduce evidence rebutting any prima facie showing by the Complainant, or to vindicate its rights or legitimate interests in the disputed domain name, if any. The Respondent did not do so, and therefore, the Respondent fails to discharge its burden of production. The Panel accepts as sufficient the evidence adduced by the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel is satisfied that the Complainant has met the requirement of paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy illustrates some non-exclusive grounds of bad faith registration and use. Relevant to the consideration of the instant case is the following ground:
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [the Respondent’s] website or location or of a product or service on your [the Respondent’s] website or location.
It is clear from the evidence in the record that the disputed domain name is used for a holding page with a number of sponsored links purporting to offer financial services similar to the Complainant’s. It is not disputed that clicking on those links will generate revenue for the Respondent; that is to say, a “commercial gain” within the meaning of the UDRP paragraph 4(b)(iv).
The Panel has determined that the disputed domain name is confusingly similar with the Complainant’s trademarks. Therefore, there is a strong likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on such website. Further, the Respondent would likely be economically advantaged through its “typo-squatting” of the disputed domain name, if a user unintentionally misspelled the Complainant’s domain name and inadvertently accessed the Respondent’s website. On a preponderance of the evidence, it is likely that disputed domain name was used by the Respondent for these purposes or with these intentions.
The Panel is persuaded by the holding of several UDRP panels that “typo-squatting” is per se bad faith. See Go Daddy Software, Inc. v. Daniel Hadani,WIPO Case No. D2002-0568. That the Respondent did not respond to the Complaint further invites an adverse inference of bad faith on its part. The Complainant’s trademarks are reasonably well known, not generic, and were formally registered with the U.S. Patent and Trademark Office well before the Respondent’s registration of the disputed domain name. Thus the Respondent’s awareness of the marks may be inferred, and its use despite such awareness would not likely have been in good faith.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the UDRP. 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.
Syed Naqiz Shahabuddin
Sole Panelist
Date: August 4, 2016
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