Complainant is ZB, N.A., a national banking association, dba Zions First National Bank of Salt Lake City, Utah, United States of America (“US”), represented by TechLaw Ventures, PLLC, US.
Respondent is Yesmail Portland, Yesmail of Portland, Oregon, US. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with CSC Corporate Domains, Inc. (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 20, 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 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 19, 2017.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 6, 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 owns US Registration Nos. 2,380,325 for the service mark ZIONS (registered on August 29, 2000); and 3,180,413 for the service mark ZIONS DIRECT (registered on December 5, 2006) (collectively, the “ZIONS Marks” or the “Marks”). As per documents of record, Zions Bancorporation, Complainant’s parent, originally applied for and obtained those registrations, but they subsequently assigned the registrations and related rights in the ZIONs Marks to Complainant who uses them. The Marks are registered for a long list of financial services.
Since July 5, 1995, Zions Bancorporation, also has been the registrant of the domain name , from which Complainant advertises and offers its banking services. Complainant does business under the name Zions First National Bank, and has been doing business under that name since June 12, 1890. Since December 4, 1997, Zions Bancorporation, has also been the registrant of the domain name , from which a subsidiary of Complainant advertises and offers its investing services. The subsidiary of Complainant does business under the name Zions Direct, and has been doing business under that name since February 7, 1986.
The Domain Name was registered on January 21, 2010, and redirects to a website that solicits users to submit sensitive information such as their company name, user name and password. 5. Parties’ Contentions A. Complainant
Comparing the Domain Name and the ZIONS Marks show that the identical marks appear in the Domain Name with the addition of “email-” in front of them. The dominant part of the Domain Name is identical or very similar to the ZIONS Marks. Accordingly, the Domain Name is confusingly similar to the Marks. The additional word “email” only exacerbates the confusing similarity and is not distinguishing because it alludes to emails that Complainant could send. The Domain Name may likely have been registered to provide Respondent the means to send correspondence to customers or potential customers of Complainant to confuse such customers as to the source of the correspondence and to solicit personal information from Complainant’s customers for malicious purposes. The page associated with the Domain Name directs consumers to an unsecure website that solicits users to submit their company name, user name, and password, and likely confuses consumers as to the source requesting such information and may cause Complainant’s customers to submit information for Respondent to login and gain access to Complainant’s customer’s personal bank accounts.
Complainant has been using its ZIONS Mark in commerce since at least as early as 1891, and obtained federal registration for such mark on August 29, 2000. Complainant has been using its ZIONS DIRECT Mark in commerce since at least as early as 2004, and obtained federal registration for such mark on December 5, 2006. Respondent registered the Domain Name no earlier than January 21, 2010. Before filing this Complaint, Complainant has not been aware of any evidence of Respondent’s 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. Instead, the Domain Name resolves to an unsecure website that solicits users to submit personal/corporate information, which may cause Complainant’s customers to submit information for Respondent to improperly and illegally login and gain access to their bank accounts. Using a domain name to post parking and landing pages may in some cases be permissible, but a parking page does not by itself confer rights or legitimate interests arising from a bona fide offering of goods or services or from legitimate noncommercial or fair use of the domain name. Complainant is also not aware that Respondent has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights. Further, Respondents are not making a legitimate noncommercial or fair use of the Domain Name, nor is it a licensee or an authorized user of the ZIONS Marks.
Respondent registered a Domain Name that includes Complainant’s registered ZIONS and ZIONS DIRECT Marks, thus the Domain Name is confusingly similar to those Marks. Using virtually identical or similar marks in the Domain Name indicates that the Domain Name was registered primarily for the purpose of disrupting Complainant’s business, and appears to be intended to take advantage of the goodwill associated with Complainant’s federally registered trademarks. By creating a likelihood of confusion with Complainant’s identical registered Marks, Respondent is clearly trying to exploit the goodwill of Complainant and its trademarks by either (i) diverting customers of Complainant from Complainant’s website to Respondent’s website or (ii) confusing customers of Complainant through the delivery of correspondence, for commercial gain or malicious purposes. As previously noted, the Domain Name resolves to an unsecure website that solicits users to submit their company name, user name, and password, which may cause Complainant’s customers to submit information for Respondent to improperly and illegally login and gain access to Complainant’s personal bank accounts. Using the Marks in the Domain Name is deceptive and misleading and may divert consumers to this website instead of Complainant’s official and authorized website.
The Marks were well known and in wide use at the time the Domain Name was registered. By combining the ZIONS and ZIONS DIRECT Marks in the Domain Name with a generic term, Respondent knew or should have known about those Marks at the time it registered the Domain Name. Respondent’s use of Complainant’s Marks may tarnish Complainant’s trademarks. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trademark 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 respondent’s domain name has been registered and is being used in bad faith.
Each of these elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant holds rights in the ZION Marks by virtue of its and its predecessor’s long-standing use of the Marks, as well as US Registration Nos. 2,380,325 for the service mark ZIONS (registered on August 29, 2000) and 3,180,413 for the service mark ZIONS DIRECT (registered on December 5, 2006).
UDRP panels have consistently held that if a domain name “wholly incorporates a complainant’s trademark”, it is sufficient evidence that the domain name is identical or confusingly similar. See, e.g., Intesa Sanpaolo S.p.A. v. Tommy, Bartles associates,WIPO Case No. DCO2015-0001. The Domain Name, , wholly incorporates the ZIONS DIRECT Mark thus it is confusingly similar to that Mark. Adding “email-” to the ZIONS DIRECT Mark does not diminish the confusing similarity with the Domain Name. Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO Case No. D2000-1511. Indeed, the public, particularly Complainant’s customers, could interpret the combination of the ZIONS DIRECT Mark with the added term “email-”, as an official and specialized site of Complainant.
Furthermore, the Top-Level portion of a domain name is generally disregarded when determining whether a domain name is identical or confusingly similar. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.11.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant alleges that: (1) before filing this Complaint, it was not aware of any evidence of Respondent’s 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. Instead, the Domain Name resolves to an unsecure website soliciting users to submit personal/corporate information, which may cause Complainant’s customers to submit confidential information for Respondent to improperly and illegally login and gain access to their bank accounts; (2) it is not aware that Respondent has been commonly known by the Domain Name, even if it did not acquire any trademark or service mark rights in it; (3) Respondent is not a licensee of the Marks or otherwise authorized to use the Marks for any purpose; and (4) Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and is using the Domain Name in bad faith. It is uncontroverted that Complainant’s use of the Marks in commerce and its trademark registrations predate (see, e.g., section 4 above) Respondent’s registration of the Domain Name. Combining the ZIONS DIRECT Mark with the term “email-”, that the public may perceive as having an official imprimatur evidences that it is more likely than not that Respondent knew about Complainant and its Marks when Respondent registered the Domain Name. These facts, further coupled with the fact that Respondent has no rights or legitimate interests in the ZION DIRECT Mark, yet it incorporated the entirety of the Mark in the Domain Name Respondent is using associated with a website to take advantage of Complainant’s customers. Based on these facts the Panel is led to conclude that Respondent knew of Complainant and Complainant’s rights in the ZIONS DIRECT Mark when it registered the Domain Name.
The evidence provided by Complainant indicates Respondent has been using the Domain Name in bad faith. Using the confusingly similar Domain Name , Respondent has been goading Complainant’s customers to provide confidential and personal information (e.g., company name, user name and password) to gain improper access to those customers’ personal bank accounts. Respondent could use such information for commercial gain and/or malicious purposes.
The Panel therefore holds that Complainant has satisfied 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 Domain Name be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: June 17, 2017
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