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 Domains By Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States / Vance Ryan, ABC Productions of Redondo Beach, California, United States. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 21, 2017. On April 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 25, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 28, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 3, 2017.
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 Respondent of the Complaint, and the proceedings commenced on May 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2017. The Response was filed with the Center on May 22, 2017. Two further email communications were received from Respondent on May 24, 2017. In these two email communications, Respondent clarified that he was not consenting to transfer of the Disputed Domain Name.
The Center appointed Richard W. Page as the sole panelist in this matter on June 12, 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 trademarks registered with the United States Patent and Trademark Office: CALIFORNIA BANK & TRUST, registration no. 3,041,054, registered on January 10 2006; CALIFORNIA BANK & TRUST (with design), registration no. 2,447,581, registered on August 14 2001; CALBANK NETWORK, registration no. 2,617,487, registered on September 10, 2002; and CB & TRUST CALIFORNIA BANK & TRUST (with design), registration no. 4,337,301, registered on May 21, 2013 (collectively the "CB&T Marks").
California Bank & Trust, predecessor in interest to Complainant, was the original applicant and registrant of these trademarks, but California Bank & Trust subsequently assigned these marks to Complainant. The CB&T Marks are in use by Complainant and registered for "banking services," and for "providing financial information via global computer network; providing electronic banking services."
Complainant had over USD 11 billion in assets and over USD 420 million in revenue at the end of calendar year 2014, the last year Complainant posted full year financial information on its website before merging into ZB, N.A. Complainant has nearly 100 branch locations throughout the State of California and is one of the leading banks in the State of California. Complainant has used the common law mark CB&T since 1998, and Complainant commonly refers to itself as CB&T as evidenced by various pages from its website.
Since July 13, 1998, Zions Bancorporation, the parent of Complainant, has been the registrant of the domain name , from which Complainant advertises and offers its banking services.
The Disputed Domain Name was registered on February 7, 2000, and updated on January 31, 2017. The Disputed Domain Name resolves to a webpage displaying sponsored links for banks and online banking. 5. Parties' Contentions A. Complainant
Complainant alleges that it is also the owner of the unregistered (common law) trademark CB&T and has used such mark in connection with banking services.
Complainant alleges that the dominant part of its CB & TRUST CALIFORNIA BANK & TRUST (with design) Mark are the letters "CB&T." Complainant further alleges that the letters "CB&T" are the abbreviation for the CALIFORNIA BANK & TRUST mark, the CALIFORNIA BANK & TRUST (with design) mark, and the CALBANK NETWORK mark.
Complainant contends that the Disputed Domain Name is identical to CB&T which is the dominant part of the CB & TRUST CALIFORNIA BANK & TRUST (with design) mark and the abbreviation for the other CB&T Marks.
Complainant further contends that the threshold test for confusing similarity under the UDRP involves a comparison between the CB&T Marks and the Disputed Domain Name to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the Disputed Domain Name, with the addition of common, dictionary, descriptive or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Complainant further contends that in this case, the CB&T Marks are clearly recognizable within the Disputed Domain Name.
Complainant asserts that by including the dominant part and abbreviation for the CB&T Marks, the Disputed Domain Name directs consumers, either directly or indirectly, to a website that references various banking terms and links to financial services, and likely confuses consumers as to the source of the goods being offered under the CB&T Marks. There is a risk that Internet users may believe there is a connection between the Disputed Domain Name and Complainant's products and services. Complainant further asserts that Respondent is intentionally creating a likelihood of confusion with the CB&T Marks as to the source, sponsorship, affiliation or endorsement of Respondent's website for commercial gain.
Complainant alleges that it has been using the CALIFORNIA BANK & TRUST mark in commerce since at least as early as 1998, and obtained federal registration of the mark on January 10, 2006. Complainant has been using its CALIFORNIA BANK & TRUST (with design) mark in commerce since at least as early as 1998, and obtained federal registration for the mark on August 14 2001. Complainant has been using its CB & TRUST CALIFORNIA BANK & TRUST (with design) mark in commerce since at least as early as 1998, and obtained federal registration of the mark on May 21, 2013. Based exclusively on the WhoIs database information, Respondent acquired the registration for the Disputed Domain Name no earlier than February 7, 2000.
Complainant alleges that Respondent has no rights or other legitimate interests in the Disputed Domain Name for the following reasons:
Complainant alleges that, prior to the filing of this Complaint, Respondent made no use of, or demonstrable preparation to use, the Disputed Domain Name, or a name corresponding to the Disputed Domain Name in connection with any bona fide offering of goods or services. Instead, the Disputed Domain Name resolves to a website which displays marks that are confusingly similar to the CB&T Marks, references various banking terms and contains links to competing financial services. Complainant further alleges that use of 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 interest arising from a bona fide offering of goods or services or for legitimate noncommercial of fair use.
Complainant is not aware that Respondent, as an individual, business or other organization, has been commonly known by the Disputed Domain Name. Complainant alleges that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant alleges that Respondent is not a licensee of Complainant's trademarks, and has not otherwise obtained authorization to use Complainant's CB&T Marks.
Complainant avers that Respondent is not using the Disputed Domain Name as part of a bona fide offering of goods or services, or for a legitimate noncommercial use. Instead, Respondent appears to be using the Disputed Domain Name to provide various banking-related search queries that direct consumers to the websites of third parties. Complainant further avers that the use of Complainant's CB&T Marks in the Disputed Domain Name and on Respondent's website is misleading and may divert consumers to Respondent's website instead of Complainant's official and authorized website. Because Respondent's website is misleading, Respondent may also use it in connection with various phishing and fraudulent activities.
Complainant alleges that Respondent registered and is using the Disputed Domain Name in bad faith for the following reasons:
Respondent registered the Disputed Domain Name that includes the dominant part of Complainant's registered mark CB & TRUST CALIFORNIA BANK & TRUST (with design) and the abbreviations for Complainant's other registered CB&T Marks.
The Disputed Domain Name is confusingly similar to such marks which indicates that the Disputed Domain Name was registered primarily for the purpose of disrupting the business of Complainant, and appears to be intended to take advantage of the goodwill associated with Complainant's federally registered trademarks.
The Disputed Domain Name leads to a website that provides direct or indirect 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 its registered marks.
While there may be insufficient information available to confirm that the website using the Disputed Domain Name is operated by a competitor, Respondent is clearly trying to exploit the goodwill of Complainant and its trademarks by diverting customers of Complainant from Complainant's website to Respondent's website for commercial gain or malicious purposes by creating a likelihood of confusion with Complainant's CB&T Marks.
Respondent is intentionally creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website, instead of Complainant's official and authorized website.
Bad faith registration of a domain name can be found when the respondent "knew or should have known" about the existence of the complainant's trademarks, especially where the complainant's marks are well‑known or in wide use at the time the domain name was registered.
Evidence of offers to sell the domain name is generally admissible under the UDRP and is often used to show bad faith. The legal criteria for showing bad faith directly specify that an offer for sale can be evidence of bad faith, and panels may determine that settlement discussions either represent a good faith effort to compromise or a bad faith effort to extort.
Respondent has made the Disputed Domain Name available for sale to the general public as evidenced by the notice on the website associated with the Disputed Domain Name. Awareness of Complainant's CB&T Marks coupled with an offer made to the general public to sell the Disputed Domain Name is evidence of registration and use in bad faith.
Respondent is responsible for the content appearing on the website associated with the Disputed Domain Name, even in the case where Respondent's website posts advertising links on an "automatically" generated basis, and Respondent has apparently not made any good faith efforts to prevent inclusion of advertising links on such website.
Because Respondent's website is accessed using the Disputed Domain Name which included Complainant's CB&T Mark, or the dominant part of or abbreviation for Complainant's registered CB&T Marks, the use of the Disputed Domain Name is misleading and Respondent may also use it in connection with various phishing and fraudulent activities.
Although in some cases the use of a domain name that resolves to a parking or landing page may be permissible, that is not the case in this matter where the links are to competitive products and services of Complainant. The apparent lack of active use of a domain name does not prevent a finding of bad faith.
Complainant, or its affiliates, has prevailed on several prior complaints for domain names that include Complainant's registered marks, and that are similar to the Disputed Domain Name. In these matters, the panels found bad faith registration and use of the domain name, and awarded transfer of the domain names to the complainant. Each of the domain names should be given consideration for consistency. B. Respondent
Respondent contends that an entity which is unrelated to Complainant named Synovus Financial Corp. of Georgia has owned a federal trademark registration for CB&T for banking services since 1995. Synovus Financial Corp. uses the domain name to offer its banking services. Therefore, Complainant is not the owner of the CB&T Mark and has no right to the Disputed Domain Name. If Complainant is using the CB&T Mark for banking services, then it is a trademark infringer.
Respondent further contends that Complainant's claim that a comparison of the Disputed Domain Name and Complainant's registered mark CB & TRUST CALIFORNIA BANK & TRUST (with design) shows that the Disputed Domain Name is identical to the dominant part of Complainant's registered mark is an opinion.
Respondent further contends that the CB & TRUST CALFORNIA BANK & TRUST (with design) mark, as well as the marks CALIFONRIA BANK & TRUST, CALIFORNIA BANK & TRUST (with design) and the common law mark CB&T, contain an ampersand and is different and distinct from the Disputed Domain Name.
Respondent asserts that the ampersand in the logogram "&", represents the conjunction word "and." CB&T is an abbreviation of CBandT. The domain name is currently operated by Commonwealth Bank & Trust Company offering banking services. Respondent contends that the domain name is the abbreviation for CB&T; therefore, the owner of the CB&T mark has no rights to the Disputed Domain Name.
Respondent further contends that the mark CB&T, in addition to being used by Synovus Financial Corp. and Commonwealth Bank & Trust Company, is used by several other companies offering banking services so it is unreasonable for Complainant to claim that Internet users may believe there is a connection between the Disputed Domain Name and Complainant's products and services. Other companies using the mark CB&T and offering banking services include Cumberland Bank & Trust using domain name ; CBT Bank using the domain name ; Citizens Bank & Trust using the domain name and Community Bank & Trust using the domain name .
Respondent acknowledges that the Disputed Domain Name has resolved to various pages since being registered, including random parked pages; however, Respondent firmly denies that any of these pages has caused confusion, damage or harm to any mark owned by Complainant and Complainant has provided no evidence to the contrary.
Respondent contends that it has rights and a legitimate interest in the Disputed Domain Name and maintains the right to register a domain name for the purpose of using it, selling it or holding it as an investment. Respondent is a Registered Investment Advisor and currently owns approximately 1,850 four-letter ".com" domain names. Respondent has been an investment advisor since 1991 and a collector/investor of four‑letter ".com" domain names since 1998. Respondent's ownership of the Disputed Domain Name is absolute for so long as it is renewed. The Disputed Domain Name need not be developed or used, but it can be sold.
Complainant claims that Respondent has no right in the Disputed Domain Name because Complainant owns the trademark rights to the CB&T Marks, but Respondent has submitted alleged proof that Complainant is not the owner of the CB&T marks. Respondent denies that the Disputed Domain Name was registered and is being used in bad faith. Complainant's claim that Respondent "knew or should have known" of Complainant's business at the time the Disputed Domain Name was registered on February 7, 2000 is opinion, speculation and conjecture, without evidence. Respondent did not know of Complainant's business at the time the Disputed Domain Name was registered and has never done business with Complainant. Respondent did not register the Disputed Domain Name with the intent to sell it to Complainant and has never contacted Complainant to offer the Disputed Domain Name for sale or for any other reason. There is no evidence that the Disputed Domain Name was registered and is being used in bad faith. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the CB&T Marks in which Complainant has rights; and,
(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations covering the CB&T Marks. Complainant further contends that the phrase "CB&T" is either the dominant element or abbreviation for these CB&T Marks. Complainant also claims a common law mark from a long and continuous use of the term "CB&T," especially in California where Respondent is located.
Complainant contends that the Disputed Domain Name is identical to CB&T which is the dominant part of the CB & TRUST CALIFORNIA BANK & TRUST (with design)® mark and the abbreviation for the other CB&T Marks.
Respondent contends that Complainant has no enforceable trademark or service mark rights in "CB&T," because an entity unrelated to Complainant named Synovus Financial Corp. has owned the federal trademark registration of CB&T for banking services since 1995. Synovus Financial Corp. uses the domain name to offer its banking services. Therefore, Complainant is not the registered owner of trademark rights in CB&T and has no claim to the Disputed Domain Name.
The Panel finds that potentially superior claims from third parties to the CB&T Marks are not within the scope of analysis in this UDRP proceeding. Third parties making claims to Complainant's alleged trademark rights or to the Disputed Domain Name have other legal means for asserting such claims, if they choose. Therefore, the Panel considers only the relative rights of Complainant and Respondent in this proceeding.
The Panel finds that the registrations alleged by Complainant have not been adequately refuted and that CB&T is either a dominant element or abbreviation for the CB&T Marks. Therefore, for purposes of this proceeding, Complainant has enforceable rights in the CB&T Marks.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the CB&T Marks pursuant to the Policy, paragraph 4(a)(i).
Respondent contends that Complainant's CB&T Marks contain an ampersand which is different and distinct from the letter "n" in the Disputed Domain Name . Respondent asserts that the ampersand in the logogram "&," represents the conjunction word "and." CB&T is, therefore, an abbreviation of "CBandT." The domain name is currently operated by Commonwealth Bank & Trust Company offering banking services. Respondent contends that the domain name is the abbreviation for CB&T, thus forming another basis upon which to rule that Complainant has no claim to the Disputed Domain Name.
Respondent contends that CB&T, in addition to being used by Synovus Financial Corp. and Commonwealth Bank & Trust Company, is used by several other companies offering banking services so it is unreasonable for Complainant to claim that Internet users may believe there is a connection between the Disputed Domain Name and Complainant's products and services. Other companies using CB&T and offering banking services include Cumberland Bank & Trust using domain name ; CBT Bank using the domain name ; Citizens Bank & Trust using the domain name and Community Bank & Trust using the domain name .
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. The Panel finds that the Disputed Domain Name, , incorporates the entire "CB&T" element of the CB&T Marks with only the substitution of "n" for the ampersand. The Panel finds that the use of "n" in the place of "and" or "&" is common in modern English and does not eliminate the confusing similarity. See, F. Hoffmann‑La Roche AG v. P Martin,WIPO Case No. D2009-0323; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the CB&T Marks and that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the CB&T Marks at issue.
Complainant alleges that Respondent has no relationship with or permission from Complainant for the use of the CB&T Marks.
Complainant alleges that Respondent has no rights or other legitimate interests in the Disputed Domain Name because the Disputed Domain Name resolves to a parking page with references to various banking terms and contains links to competing financial services. Complainant further alleges that such use of the Disputed Domain Name may in some cases be permissible, but a parking page does not by itself confer rights or legitimate interest arising from a bona fide offering of goods or services or for legitimate noncommercial of fair use. WIPO Overview 3.0, section 2.9.
Complainant further alleges that it is not aware that Respondent, as an individual, business or other organization, has been commonly known by the Disputed Domain Name.
The Panel finds that Complainant has stated a prima facie case under paragraph 4(a)(ii) of the Policy and that Respondent has the burden to refute it.
Respondent acknowledges that the Disputed Domain Name has resolved to various pages since being registered, including random parked pages; however, Respondent firmly denies that any of these pages has caused confusion, damage or harm to any mark owned by Complainant and Complainant has provided no evidence to the contrary.
Respondent contends that it has rights and a legitimate interest in the Disputed Domain Name and maintains the right to register a domain name for the purpose of using it, selling it or holding it as an investment. Respondent is a Registered Investment Advisor and currently owns approximately 1,850 four-letter ".com" domain names. Respondent has been an investment advisor since 1991 and a collector/investor of four‑letter ".com" domains since 1998. Respondent asserts that his ownership of the Disputed Domain Name is absolute for so long as it is renewed. The Disputed Domain Name need not be developed or used, but it can be sold.
The Panel finds that Respondent lacks permission to offer financial services under Complainant's name and has not engaged in the bona fide offering of goods and services on the website to which the Disputed Domain Name resolves. The Panel further finds that Respondent has not been commonly known by the Disputed Domain Name and that Respondent is holding the Disputed Domain Name as an investment for commercial purposes for the associated trademark value.
The Panel concludes that the file contains no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in paragraph 4(c) of the Policy. Nor does Respondent otherwise demonstrate rights or legitimate interests in the Disputed Domain Name. Therefore, the Panel holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the CB&T Marks or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the CB&T Marks from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the CB&T Marks as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant avers that the Disputed Domain Name is confusingly similar to the CB&T Marks and that use of the CB&T Marks on Respondent's website is misleading and may divert consumers to Respondent's website instead of Complainant's official and authorized website.
While Respondent claims that it owns numerous domain names comprised of four letters, the Panel finds it unlikely that Respondent registered the Disputed Domain Name independently without the intent to take advantage of its significance as a trademark. This is particularly evident based on the use put forth by Respondent, namely hosting sponsored links to third-party sites related to banking. Such use is telling of Respondent's bad faith intent to illegitimately benefit from confusion with Complainant's CB&T Marks.
Therefore, Complainant has also established the elements of 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 Disputed Domain Name, , be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: June 20, 2017
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