The Complainant is ZB, N.A., dba Zions First National Bank of Salt Lake City, Utah, United States of America, represented by John Rees Law, PLLC, United States of America (“USA”).
The Respondent is Qiang Shan / Shan Qiang of Nantong, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with West263 International Limited (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2016. On November 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 29, 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. On December 1, 2016, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, 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. On December 2, 2016, the Complainant submitted an amendment to the Complaint upon the Center’s request.
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 in English and Chinese, and the proceeding commenced on December 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on January 4, 2017. 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 financial institution which has been using the trade mark ZIONS in commerce since 1891 and ZIONS BANK since 1992. The Complainant has been trading under the name Zions First National Bank since June 12, 1890. The Complainant has registered trade marks for ZIONS BANK, ZIONSBANK.COM and ZIONS (“the Trade Marks”) in the USA. The earliest trade mark registration submitted in evidence dates back to August 29, 2000 (registration number 2,381,006 for ZIONS BANK). The Complainant advertises and offers its banking services from the website connected to the domain name .
The Respondent registered the Domain Name on November 11, 2016. The Domain Name is connected to a pay-per-click website which has links to websites which offer products and services which compete with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for the Complainant to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint as well as in its response to the Center on December 1, 2016 that the language of the proceeding should be English. The Complainant contends that it is an organisation in the USA and conducts all if its business in English; it is unable to communicate in Chinese; the Domain Name is in English and therefore the Respondent is likely to be able to communicate in English; the Complainant will not be able to conduct the proceeding in Chinese without a great deal of additional expense and delay due to the need for translation (on top of what it has already had to spend to file and prosecute this Complaint in order to protect its trade mark) and it would not be fair to and would place an undue burden on the Complainant to have to conduct the proceeding in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel finds that the website content is in English which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Marks.
The threshold test for confusing similarity involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name is a misspelling of the Trade Marks with the word “bank” within the Domain Name misspelt as “vank”.
The consensus view on this issue as set out in paragraph 1.7 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) says this:
“A domain name which contains a common or obvious misspelling of a trade mark normally will be found to be confusingly similar to such trade mark, where the misspelled trademark remains the dominant or principal component of the domain name.”
In this case, there is no need to ignore the generic Top-Level Domain (“gTLD”) suffix “.com” since one of the Trade Marks includes this same gTLD suffix. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
The Complainant contends that the Respondent does not satisfy any of the circumstances set out under paragraph 4(c) of the Policy to demonstrate he/she has rights or legitimate interests to the Domain Name. The Respondent is not commonly known by the Domain Name nor does it have any trade marks for the Domain Name. It is not a licensee of the Complainant nor in any way authorized to use the Domain Name. Further the website connected to the Domain Name is not a bona fide offering of goods or services.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Trade Marks were registered and used by the Complainant long before the registration of the Domain Name. The fact the Domain Name is a deliberate misspelling of the Trade Marks evidence the fact that the Respondent knew of the Complainant’s use and rights in the Trade Marks. The Panel is satisfied that the Respondent must have been aware of the Complainant’s Trade Marks when it registered the Domain Name. In the Panel’s view this is clear evidence that the registration of the Domain Name was in bad faith.
The Panel also finds that the actual use of the Domain Name was in bad faith. The website that was connected to the Domain Name was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. Further, the misspelling of the Trade Marks in the Domain Name is intended to attract searchers to the Respondent’s website by creating a likelihood of confusion in order to make visitors think that they are on the Complainant’s legitimate website or that the website is endorsed and sponsored by or affiliated to the Complainant. Such use amounts to use in bad faith.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: January 16, 2017
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