The Complainants are ZB, N.A., dba Zions First National Bank and ZB, N.A., dba Amegy Bank, both of Salt Lake City, Utah, United States of America represented by TechLaw Ventures, PLLC, United States of America.
The Respondent is Cameron David Jackson of New South Wales, Australia. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Instra Corporation Pty Ltd.; the disputed domain names , , , , , , , and are registered with Uniregistrar Corp (the disputed domain names are hereinafter referred altogether as the “Domain Names”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2016. On July 18, 2016, the Center transmitted by email to the relevant registrar a request for registrar verification in connection with the domain names and . On July 19, 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 July 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2016.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 25, 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.
On August 25, 2016 the Complainant filed an amendment to the Complaint to amend contact information for the Complainant’s counsel and requested that the Panel consider a substantive amendment to the Complaint as the Respondent had registered additional domain names , , and containing the Complainant’s marks. The next day August 26, 2016 the Complainant requested that an additional domain name which had been registered that day be added to the Complaint, . The Panel agreed that it was fair and practicable to consider the additional registrations and that it was not prejudicial to the Respondent for them to be considered as part of the original Complaint and they were added subject to confirmation by the relevant Registrars that they were registered to the Respondent by means of Procedural Order No. 1 to the proceedings on September 1, 2016. Once it was verified that they were registered by the Respondent, the Panel issued Procedural Order No. 2 on September 12, 2016 inviting the Respondent to make any representations regarding the addition of further domain names to the proceedings by September 19, 2016. No such representations were received. Accordingly in Procedural Order No. 3, issued by the Panel on September 28, 2016, the Complainant was invited to submit an Amended Complaint to take into account by way of submission of relevant trademark rights and assertions the additional domain names by October 5, 2016 and the Respondent invited to submit any response thereto by October 12, 2016. However on September 30, 2016 the Complainant requested the addition to the proceedings of further domain names registered by the Respondent , , , , . The Panel agreed that it was fair and practicable to consider the additional domain names and that it was not prejudicial to the Respondent for them to be considered as part of the original Complaint and they were added subject to confirmation by the relevant Registrar that they were registered by the Respondent by Procedural Order No. 4 on October 5, 2016. Following such confirmation by the Registrar the Panel issued Procedural Order No. 5 on October 10, 2016 allowing the Complainant to submit an Amended Complaint to again make relevant submissions with respect to the additional domain names by October 14, 2016 which was duly filed on October 11, 2016. By the same Procedural Order the Respondent was given until October 21, 2016 to file its Response but no Response was filed by the Respondent by that date. 4. Factual Background
Complainant is the owner, among others, of the registered service mark ZIONS registered in the United States Patent and Trademark Office on August 29, 2000 (with first use in commerce recorded as 1891), ZIONS BANK registered in the United States Patent and Trademark Office on August 29, 2000 (with first use in commerce recorded as 1992) and AMEGY registered in the United States Patent and Trademark Office on July 24, 2007 (with first use in commerce recorded as 2005), registered for financial and insurance services.
There is no evidence of use of the Domain Names the first of which was registered in March 29, 2016. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant in this proceeding is ZB NA dba as Zions First National Bank and Amegy Bank.
Complainant is the owner of registered service marks ZIONS BANK, ZIONSBANK.COM and ZIONS (“the ZIONS Service Marks”) for financial and insurance services. The Complainant’s parent company Zions Bancorporation is the registrant of and . The Complainant started business under the name Zions First National Bank in the 1890s.
A comparisons of , , , and (the “Zions Domain Names”) and the Complainant’s ZIONS Service Marks show that the identical mark is included and recognizable in the Zions Domain Names with the addition of the common and descriptive terms “first”, “national”, “bank”, “insurance”, and/or “creditsolutions” making the Zion Domain Names confusingly similar to the Complainant’s ZIONS Trade Marks and exacerbating confusion with generic terms related to the Complainant’s business. In addition in typosquatting has occurred as a misspelling of the Complainant’s mark ZIONS. The disputed domain name is a reference to Zions Bank National Association, but Zions Bank has been truncated to zb, ZB NA being the name of the Complainant since January 2016.
Complainant is the owner of, inter alia, registered trade marks for AMEGY and AMEGY BANK (“the AMEGY Service Marks”) for financial and insurance services. The Complainant’s parent company Zions Bancorporation owns and .
A comparison of , , , and (the “Amegy Domain Names”) and the AMEGY Service Marks show that AMEGY is included and recognisable in these domain names with the addition of the common and descriptive terms “national”, “association”, “corp”, “bank”, “loanadministration” and “banking” which exacerbate rather than relieve confusion.
The generic Top-Level Domains are usually disregarded under the confusing similarity test unless it forms part of the relevant trade mark.
Respondent has no rights or legitimate interests in the Domain Names. He has not used them in relation to any bona fide offering of services. He has not been commonly known by them. He is not making noncommercial fair use of them. He is not a licensee of the Complainant’s trade marks. Use for parking pages does not confer any rights or legitimate interests.
The Domain Names were registered to disrupt the business of the Complainant. The Respondent is trying to divert and confuse customers of the Complainant to web sites of its choosing for commercial gain or malicious purposes causing confusion with the Complainant’s trade marks. Complainant’s trade marks were well-known and in wide use at the time the Domain Names were registered. The use of the Complainant’s marks is misleading and may be used for phishing or fraudulent activities and may tarnish the Complainant’s reputation.
Evidence of offers to sell domain names can be evidence of bad faith. The Respondent has offered to sell other domain names previously to the Complainant and this has resulted in transfer of other domain names not the subject of this proceeding to the Complainant from the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Procedural Issue: addition of multiple domain names
The Complaint was originally submitted regarding the disputed domain names and . After the notification of Panel appointment, Complainant requested the addition of the disputed domain names , , , , , , , , , and . The Panel considers that it is reasonable to accept the addition of these disputed domain names to the Complaint as all Domain Names involve Complainant’s trademarks and have been registered by the same domain name holder within a short period. The Panel has provided both Parties with enough time as to submit their contentions regarding the additional disputed domain names. While the Complainant has submitted an Amended Complaint referring to all the Domain Names the Respondent has not submitted any communication. The Panel finds that the addition of the disputed domain names to the present proceeding has been fair and equitable to all the parties. In addition, the Panel notes that in other proceedings involving the Respondent, he has been found to have registered “domain names involving the same prominent trademark within three weeks after selling a domain name to the markholder complainant” (see Statoil ASA (“Statoil”) v. Cameron Jackson,WIPO Case No. D2015-2226) and in similar cases involving the same Respondent, panels have found that “the only apparent reason the Respondent registered the third domain name was to increase his bargaining leverage against the Complainant, ‘a highly improper purpose.’” (see Cash Converters Pty Ltd. v. Cameron David Jackson,WIPO Case No. D2014-2265; and similarly Thule Sweden AB v. Cameron David Jackson,WIPO Case No. D2016-0414). The Panel considers that on the balance of probabilities the Respondent has registered the additional disputed domain names to increase his bargaining leverage against the Complainant, especially considering Complainant’s allegations that in previous occasions Respondent has offered to the Complainant domain names with Complainant’s trademarks. The Panel finds that the circumstances of this case overwhelmingly favour allowing the addition of the disputed domain names. Procedural efficiency would normally favour such addition. B. Primary Issues Identical and/or Confusingly Similar
The Complainant is a longstanding provider of financial and insurance services and is the owner of the ZIONS and AMEGY trademarks in the United States with first use in commerce recorded as 1891 and 2005 respectively. The Complainant has been known as ZB NA since January 2016.
The Zions Domain Names consist of domain names confusingly similar to the Complainant’s ZIONS registered mark plus generic words relating to the Complainant’s business. The Amegy Domain Names consist of domain names confusingly similar to the Complainant’s AMEGY registered mark plus generic words relating to the Complainant’s business. The addition of these generic words do not serve to distinguish the Domain Names from the Complainant’s marks especially bearing in mind that they relate to financial business in which the Complainant is involved. The disputed domain name reflects the Complainant’s corporate name ZB NA which the Complainant has used in relation to its business since January 2016. In addition, the disputed domain name is comprised of an abbreviated form of the trademark ZIONS BANK together with the terms “national association”. The use of an abbreviation of the trade mark does not in the circumstances of this case sufficiently distinguish the resulting domain name from the Complainant’s trademark nor avoid confusing similarity between Complainant’s trademark and the disputed domain name (see similarly Express Messenger Systems, Inc. v. Golden State Overnight,WIPO Case No. D2001-0063; and Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts,WIPO Case No. D2001-0381; Philip Morris USA Inc. v. Steven Scully, J&S Auto Repair,WIPO Case No. D2015-1001).
The addition to the Domain Names of gTLDs does not distinguish them from the Complainant’s marks. Accordingly, the Panel finds that the Domain Names are confusingly similar to marks in which the Complainant has rights for the purpose of the Policy. Rights or Legitimate Interests
There is no evidence of any use by the Respondent of the Domain Names. However, it is clear from the content of the Domain Names themselves and the use of the distinctive marks ZIONS, AMEGY and ZIONS BANK with generic words reflecting financial or insurance services that the Respondent was aware of the Complainant and its business at the time of registration of the Domain Names. The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s marks for competing services which in the circumstances of the Complainant’s longstanding reputation in this field could not be bona fide use. The Complainant has stated in the Complaint that the Respondent has not been commonly known by the Domain Names, the Respondent is not a licensee of Complainant’s trademarks and the Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Names. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Complainant has satisfied the second limb of the Policy. Registration and Use in Bad Faith
The content of the Domain Names themselves using marks of the Complainant with generic terms related to the financial and insurance industries makes it clear that the Respondent was aware of the Complainant’s rights at the time of registration of the Domain Names. Following filing of the Complaint the Respondent registered ten further domain names clearly referring to the Complainant which have been included by subsequent procedural orders into these proceedings. The Panel is of the opinion that the Respondent registered the Domain Names to prevent the Complainant from reflecting their mark in corresponding domain names and it has engaged in a pattern of such conduct in accordance with paragraph 4(b)(ii) of the Policy, which shall be evidence of the registration and use of the Domain Names in bad faith.
As such, the Panel believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb 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 , , , , , , , , , , , be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: October 28, 2016
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