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 Names and Registrar
The disputed domain names and are 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 15, 2017. On June 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 17, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 20, 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 22, 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 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 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:
- US Trademark ZIONS BANK No. 2,381,006, registered on August 29, 2000, duly renewed and covering services in class 36;
- US Trademark ZIONS No. 2,380,325, registered on August 29, 2000, duly renewed and covering services in class 36;
- US 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 names, and , were respectively registered on October 4, 2005 and December 11, 2005. Both disputed domain names resolve to pages featuring sponsored links in relation with the Complainant’s activities. 5. Parties’ Contentions A. Complainant
First of all, the Complainant argues that the disputed domain names reproduce the ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks identically, with the sole addition of the suffix “ing” in the domain name and with the addition, between the terms “ZIONS” and “BANK”, of the word “national” in the domain name . Hence, the latter deems that its trademarks are highly recognizable in the disputed domain names and that there exists a confusing similarity between the disputed domain names 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 names, which occurred in 2005. Furthermore, the Complainant states that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services, since they both resolve to websites displaying the Complainant’s trademarks and links to competing services.
Then, the Complainant argues that the disputed domain names all include the trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM, which demonstrates that such domain names were registered primarily for the purpose of disrupting the business of the Complainant. Furthermore, consumers are misled by the fact that the disputed domain names resolve to websites which inter alia display links to competing services. Besides, the disputed domain names are offered for sale to the general public. This would also be an indicator of registration and use of the disputed domain names in bad faith. Finally, the Complainant also raises the fact that the disputed domain names are registered through a privacy shield, which is also a factor to take into account when assessing the bad faith of a registrant. 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 to the disputed domain names and . As stated by the Complainant, the mere addition of the suffix “ing” in the first disputed domain name and of the term “national” in the second disputed domain name do not dispel the confusing similarity with its trademarks.
In this regard, previous UDRP panels have held that when a domain name entirely incorporates a complainant’s registered trademark, this fact might be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059 or Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150).
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 names are confusingly similar to 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 names. Indeed, the information on the Respondent provided by the registrar shows that it is known as “Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd” 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 names.
Finally, the disputed domain names resolve to websites which display the Complainant’s trademarks and links relating to competing financial services, as stated by the Complainant.
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 names. 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 names fully incorporate the Complainant’s trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM, with the addition of a suffix or word which do not dispel the risk of confusion. 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 names in 2005.
The Panel is of the opinion that the Respondent registered the disputed domain names 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 names in bad faith.
Regarding the criterion of use in bad faith, the Complainant has shown that the disputed domain names resolve to websites featuring sponsored links relating to the Complainant’s activities as well as to competitors’ services, which cannot amount to a use of the disputed domain names in good faith.
Also, the disputed domain names are offered for sale, which is a 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 names in bad faith.
Consequently, the Panel finds that the Respondent is using the disputed domain names 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 names, and , be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: August 7, 2017
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