Complainant is ZB, N.A., a national banking association, dba California Bank & Trust of Salt Lake City, Utah, United States of America (“United States”), represented by TechLaw Ventures, PLLC, United States.
Respondent is Domain Admin of Kamloops, British Columbia, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with BigRock Solutions Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2017. On April 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 10, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 11, 2017.
The Center appointed Gregor Vos as the sole panelist in this matter on May 29, 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
Complainant is the owner of the following United States trademarks used in connection with its banking and financial services (hereinafter the “Trademarks”):
- United States Registration No. 3,041,054 for CALIFORNIA BANK & TRUST, registered on January 10, 2006;
- United States Registration No. 2,477,581 for registered on August 14, 2001;
- United States Registration No. 2,618,487 for CALBANK NETWORK, registered on September 10, 2002.
Further, Complainant’s parent company, Zions Bancorporation, has been the registrant of the domain name since July 13, 1998.
The Domain Name has been registered by Respondent since May 21, 2006. The Domain Name resolves to a parking page displaying sponsored links to services in competition with those of Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts to have been doing business under the name California Bank & Trust since October 1, 1998. According to Complainant, it has used the CALIFORNIA BANK & TRUST mark, the CALIFORNIA BANK & TRUST (with design) mark and the CALBANK NETWORK mark in commerce since 1998. California Bank & Trust, which is predecessor in interest to Complainant, originally filed the trademark registrations for these marks, but later transferred these to Complainant. All referenced marks are registered for various banking services.
Complainant asserts that the Domain Name is identical or confusingly similar to the Trademarks, as it includes the dominant part of the Trademarks and as the Trademarks are clearly recognizable within the Domain Name. Complainant states that there is a risk that Internet user may believe that there is a connection between the Domain Name and Complainant’s products and services.
Complainant furthermore submits that Respondent does not hold any rights or legitimate interests with respect to the Domain Name. Complainant has not been aware of any evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Complainant states that the Domain Name resolves to a website that is displaying trademarks that are confusingly similar to the Trademarks, references various banking terms and contains links to competitors’ services. Complainant also submits that it is not aware that Respondent has been commonly known by the Domain Name or that Respondent is making a legitimate noncommercial or fair use of the Domain Name. Complainant has not authorized Respondent’s use of the Domain Name.
Finally, Complainant asserts that the Domain Name has been registered and used in bad faith. Complainant states that the use of virtually identical or confusingly similar marks in the Domain Name indicates that the Domain Name was registered primarily for the purpose of disrupting the business of Complainant and to take advantage of the goodwill associated with the Trademarks. The website under the Domain Name displays the Trademarks and links to various banking related and other search queries, which identify services that are identical or similar to the type of services offered by Complainant under the Trademarks. Furthermore, Complainant submits that by using the Trademarks, Respondent is intentionally creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. In addition, Complainant asserts that considering the repute of the Trademarks, Respondent knew or should have known about the Trademarks at the time it registered the Domain Name.
Consequently, Complainant requests that the Domain Name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Based on paragraph 4(a) of the Policy, a request to transfer a domain name must meet three cumulative conditions:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Only if all three elements are fulfilled, the Panel is able to grant the remedies requested by Complainant. A. Identical or Confusingly Similar
Complainant has sufficiently proven that it is the owner of the Trademarks.
The threshold test for confusing similarity under the Policy involves a comparison between the trademarks and the domain name to assess whether the trademarks are recognizable within the domain name. Normally, the generic Top-Level Domain (“gTLD”) suffix “.com” can be ignored in the comparison between the domain name and the trademarks. This case does not contain any indications to the contrary.
The Domain Name is essentially identical to the trademark CALIFORNIA BANK & TRUST and the trademarks CALIFORNIA BANK & TRUST (with design) and CALBANK NETWORK are clearly recognizable within the Domain Name. Therefore, the Panel finds that an Internet user viewing the Domain Name would likely confuse the Domain Name with the Trademarks.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Complainant bears the burden of proof of showing that the Respondent has no rights or legitimate interests in the Domain Name. If a complainant succeeds in making its prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Paragraph 4(c) of the Policy provides circumstances in which such rights or legitimate interests to the domain name may be demonstrated. These circumstances include (i) use of the domain name in connection with a bona fide offering of goods or services; (ii) being commonly known by the domain name; and (iii) making legitimate noncommercial or fair use of the domain name.
Complainant has asserted that Respondent has not met these circumstances. Complainant has stated that Respondent was not authorized or licensed to use the Trademarks. Furthermore, Complainant has submitted evidence that Respondent has used the Domain Name to refer to a website containing the Trademarks and links to competing financial services.
In accordance with prior UDRP decisions, the Panel holds that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with complainant or otherwise mislead Internet users (E.J. McKernan Co. v. Texas International Property Associates,WIPO Case No. D2007-1499; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404).
As a result, the Panel finds that Complainant’s prima facie case is sufficiently established. The burden of production therefore shifts to Respondent.
Respondent has not refuted the assertions by Complainant.
Consequently, the Panel finds that the requirement under paragraph 4(a)(ii) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Complainant must establish that Respondent registered and subsequently is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides circumstances which, if present, shall be evidence of the registration and use of a domain name in bad faith.
The Trademarks predate the registration date of the Domain Name, which means that Respondent could have contemplated Complainant’s rights. Absent any evidence to the contrary, the Panel finds that Respondent registered the Domain Name in bad faith.
Given the fact that the Domain Name resolves to a website that contains the Trademarks as well as links to competing financial services, the Panel finds confirmation that Respondent intentionally attempted to attract Internet users, for commercial gain, to its website under the Domain Name by creating a likelihood of confusion as set out in paragraph 4(b)(iv) of the Policy. By doing so, it is clear that Respondent sought to take commercial advantage of the Trademarks, therefore also using the Domain Name in bad faith.
Consequently, the Panel finds that the requirement under paragraph 4(a)(iii) of the Policy has been fulfilled. 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 Complainant.
Gregor Vos
Sole Panelist
Date: June 23, 2017
Full & Egal Universal Law Academy