The Complainant is ZB, N.A., a national banking association, dba Zions First National Bank of Salt Lake City, Utah, United States of America (“United States” or “U.S.”), represented by TechLaw Ventures, PLLC, United States.
The Respondent is Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyP of Queensland, Australia / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd of Chitré, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2017. On June 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 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 the Complainant on June 22, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 27, 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 the Respondent of the Complaint, and the proceedings commenced on June 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2017.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 24, 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
ZB, N.A., a national banking association, dba Zions First National Bank, the Complainant, is a U.S. company specialized in banking and finance.
The Complainant inter alia owns the following U.S. trademarks:
- U.S. Trademark ZIONS BANK No. 2,381,006 registered on August 29, 2000, duly renewed and covering services in class 36;
- U.S. Trademark ZIONS No. 2,380,325 registered on August 29, 2000, duly renewed and covering services in class 36;
- U.S. Trademark ZIONSBANK.COM No. 2,531,436 registered on January 22, 2002, duly renewed and covering services in class 36.
A parent company of the Complainant, namely Zions Bancorporation, owns the domain name since July 25, 1995, through which the Complainant advertises and offers its services.
The disputed domain name, was registered on November 1, 2005 and resolves to a website featuring sponsored links in relation with the client’s activities and bearing a mention indicating “Buy this domain”. 5. Parties’ Contentions A. Complainant
First of all, the Complainant argues that the disputed domain name reproduces the ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks identically, except that the letter “s” of the term “ZIONS” is replaced, in the disputed domain name, by the letter “a”, which reveals a case of typosquatting.
Hence, the Complainant deems that its trademarks are clearly recognizable in the disputed domain name and that there exists a confusing similarity between the disputed domain name and its trademarks.
Secondly, the Complainant contends that it has been using the ZIONS trademark in commerce since 1891 and owns valid trademark rights on said sign since August 29, 2000. As for the trademark ZIONS BANK, it has been in commerce since 1992. Trademark rights on this sign were obtained on August 29, 2000. The ZIONSBANK.COM trademark has first been in use in 1995 and is registered in the United States since January 22, 2002. Therefore, these rights are prior to the registration of the disputed domain name, which occurred in 2005. Furthermore, the Complainant states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, since, according to the Complainant, it resolves to a website displaying its trademarks and links to competing services.
Then, the Complainant argues that the disputed domain name includes typosquatted versions of the trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM and states that “by including Complainant’s identical registered trademarks as the dominant part of the Domain Name, although with an apparently intentional typographical error, Respondent is intentionally creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website”.
Furthermore, consumers are misled by the fact that the disputed domain name resolves to a website which inter alia displays links to competing services. Besides, the disputed domain name is offered for sale to the general public. This would also be an indicator of registration and use of the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns valid trademark rights on the signs ZIONS BANK, ZIONSBANK.COM and ZIONS, in the United States, resulting from an assignment concluded with one of its parent companies.
All three above trademarks are incorporated, in a virtually identical manner, to the disputed domain name . As argued by the Complainant, the replacement of the letter “s” of the term “zions” by the letter “a” corresponds to typosquatting. The Panel also notes that previous UDRP panels also tend to rule in this sense. For instance, a previous UDRP panel, regarding the Complainant’s trademarks, has considered that “the disputed domain name [] relevantly only differs by way of substitution of the ‘a’ in ‘bank’ by an ‘s’. As a result, the disputed domain name has the appearance typical of a typosquatting registration, i.e., registration of a domain name that differs only by way of a minor spelling or typing error from a registered trademark to cause Internet users to arrive at webpages not in fact associated with the Complainant” (see, e.g., ZB, N.A., A National Banking Association, dba Zions First National Bank v. Domain Admin, Whois Privacy Corp,WIPO Case No. D2016-0999).
Additionally, although it is well established that the Top-Level Domain (TLD), as “.com” in the present case, may be disregarded to assert whether or not a disputed domain name is identical or confusingly similar to a complainant’s trademark (see, e.g., Diamonique Corporation v. Foley Services,WIPO Case No. D2007-0893), the Panel notes that, in the present case, the Complainant owns trademark rights for ZIONSBANK.COM incorporating the TLD “.com”. See section 1.11.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)
In view of the above, the Panel considers the Complainant to have sufficiently proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Prior UDRP panels have stated that it is sufficient for the complainant to show a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to the respondent (see, e.g., Credit Industriel et Commercial S.A. v. Zabor Mok,WIPO Case No. D2015-1432).
Here, the Complainant has shown prima facie showing that the Respondent does not benefit from a license nor authorization granted by the Complainant to use its trademarks. Moreover, there is no business relationship between the Complainant and the Respondent.
Also, the Respondent is not commonly known by the disputed domain name. Indeed, the information on the Respondent provided by the registrar shows that it is known as “Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd” or “Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyP” and not under the name “Zions”.
Furthermore, the Respondent has not filed a response to the Complainant’s contentions in an effort to demonstrate a possible legitimate interest or right in the disputed domain name.
Finally, the disputed domain names resolves to a webpage displaying which display the Complainant’s trademarks and links relating to other financial services.
In view of all the above elements, the Panel notes that the Respondent has not provided evidence of the circumstances set in paragraph 4(c) of the Policy. Consequently, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must also show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of registration and use of a domain name in bad faith.
As previously said, the disputed domain name is virtually identical to the Complainant’s trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM, in the sense that it corresponds to a typosquatted version of these trademarks. Moreover, the Complainant has also proven that such trademarks have been registered in the United States respectively since August 29, 2000 for the first two trademarks and since January 22, 2002 for the last one. Thus, these trademarks predate the registration of the disputed domain name in 2005.
The Panel is of the opinion that the Respondent registered the disputed domain name in order to mislead Internet users looking for the Complainant’s services (see, e.g., Zions Bancorporation v. Ryan G Foo / PPA Media Services,WIPO Case No. D2014-1797). This finding is corroborated by the fact that the Respondent has been using a privacy service, which is a further indicator of registration in bad faith in certain circumstances.
Thus, the Panel concludes that the Respondent has registered the disputed domain name in bad faith.
Regarding the criterion of use in bad faith, the Complainant has shown that the disputed domain name resolves to a website featuring sponsored links relating to the Complainant’s activities as well as to its competitors’ services, which cannot amount to a use of the disputed domain name in good faith.
Also, the disputed domain is offered for sale, which is further evidence to a respondent’s registration and use of a domain name in bad faith (see, e.g., Mou Limited v. IT Manager, Jack Zhang,WIPO Case No. D2016-2130). Indeed, if such activity is not per se prohibited, the context matters in the analysis. In the present case, the Panel considers that this fact shows that the Respondent, who did not submit a reply, uses the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent is using the disputed domain name in bad faith. 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 the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: August 7, 2017
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