The Complainant is ZB, N.A., dba Zions First National Bank of Salt Lake City, Utah, United States of America (“United States”), represented by TechLaw Ventures, PLLC, United States.
The Respondent is Luciano Pereira of Miami, Florida, 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 November 3, 2017. On November 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 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 November 8, 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 November 9, 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”).
On November 10, 2017, the Center received an email communication from the Respondent.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2017. On December 6, 2017, the Center notified the Parties of the commencement of the panel appointment process.
The Center appointed Dennis A. Foster as the sole panelist in this matter on December 27, 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
The Complainant, a United States of America company, has been in business for more than a century. Throughout that time, it has operated in the financial services and banking industries under the ZIONS and ZIONS BANK service marks, both of which have been registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Registration No. 2,380,325 and Registration No. 2,381,006; both registered on August 29, 2000).
The disputed domain name is owned by the Respondent, who registered the domain name on October 23, 2017. The disputed domain name resolves to a website that provides pay-per-click links to third party websites that offer products and services that are directly competitive with those of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant has been doing business in financial services and banking industries under the name “Zions First National Bank” in the United States of America since 1890. In conducting its business, the Complainant has registered the marks ZIONS and ZIONS BANK with the USPTO. Also, the Complainant operates through the domain name .
The disputed domain name, , is confusingly similar to the Complainant’s service marks. The disputed domain name includes the Complainant’s ZIONS mark and merely adds the common word “financial”. The similarity and likely confusion between the domain name and the mark are exacerbated by the fact that the additional common word relates directly to the Complainant’s line of business and services.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither affiliated with the Complainant nor authorized by the Complainant to use its marks. Moreover, the Respondent is not using the disputed domain name for a bona fide offering of good or services, as the domain name is connected with a website that contains the Complainant’s mark and provides pay-per-click links to third party websites that offer services competitive with those of the Complainant. Finally, the Complainant is unaware of any evidence that the Respondent has been commonly known as the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith. By using a disputed domain name that is confusingly similar to the Complainant’s marks, the Respondent is attempting intentionally to disrupt the Complainant’s business. Also, the Respondent is trying intentionally to trade on the goodwill associated with those marks for its commercial gain in creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Furthermore, as evidenced by notice on the Respondent’s website, the disputed domain name is offered for sale to the public in a bad faith manner. Finally, the Respondent’s use of a proxy service to register the disputed domain name smacks of bad faith registration and use of the name. B. Respondent
The Respondent did not reply to the Complainant’s contentions, it stated in its email of November 10, 2017 that it did not understand the reasons for this complaint and that it would seek for legal advice. 6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) - (iii), the Panel may rule for the Complainant and provide for the transfer to the Complainant of the disputed domain name, , if the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that the Complainant has satisfied the requirement of Policy paragraph 4(a)(i) that it has rights in its ZIONS and ZIONS BANK service marks by presenting clear evidence of its registration of those marks with the USPTO. See, VKR Holding A/S v. Li Pinglong,WIPO Case No. D2016-2269 (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.”); and Lilly ICOS LLC v. Andrew Riegel,WIPO Case No. D2006-1088 (“The Panel finds that the Complainant’s registration with the USPTO sufficiently establishes the Complainant’s rights in the CIALIS mark.”).
The Complainant argues that the disputed domain name, , is confusingly similar, if not identical, to the Complainant’s marks. The Panel finds this argument to be compelling, as the domain name contains the full ZIONS mark in the first, and most prominent, position. In the Panel’s view, the addition of the descriptive word “financial” creates little if any distinction between the domain name and that mark. The Panel agrees with the many prior UDRP panels that have dismissed such generic-word additions, especially when the additional word relates directly to a complainant’s business (as is the case here), as insufficient to avoid a finding of confusing similarity. Therefore, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s marks. See, Coutts & Co. v. Registration Private, Domains By Proxy, LLC / Anne Wells,WIPO Case No. D2015-1509 (finding to be confusingly similar to the complainant's COUTTS mark, where that complainant was engaged in the banking industry); and Bank of America Corporation v. null / Contact Privacy Inc. Customer 0134904339,WIPO Case No. D2013-1246 (where was found to be confusingly similar to the MERRILL EDGE mark).
Accordingly, the Panel finds that the Complainant has shown successfully that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
It is the consensus of prior Policy rulings that a complainant need put forward only a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name, before the burden of production on that issue is passed to that respondent. See, for example, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149; and Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912. In the instant case, the Panel believes that the Complainant has met its burden to present such a prima facie case, because there has been a finding of confusing similarity between the disputed domain name and the Complainant’s service marks, and the Complainant has asserted clearly that there is neither an affiliation between it and the Respondent nor any authorization/license for the Respondent to use said marks in any manner.
In determining whether there is an effective rebuttal to the Complainant’s prima facie case, the Panel cannot rely upon a Response because the Respondent has failed to file a formal one (the Panel notes that the Respondent submitted an informal email on November 10, 2017). In this circumstance, the Panel, in its examination of the remaining record, will accept as true all of the Complainant’s reasonable contentions. See, Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 (“...in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.”); and The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“...the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.”).
The Panel discerns no reason to believe that the Respondent, Luciano Pereira, or any company that he might own, has been commonly known as the disputed domain name. Ergo, in the Panel’s opinion, the possible rebuttal suggested in Policy paragraph 4(c)(ii) is inapplicable. Moreover, the Panel accepts the Complainant’s contention (supported by Complaint submissions) that the disputed domain name is being used by the Respondent to host a website that provides pay-per-click links to third party websites offering financial services that compete directly with those furnished by the Complainant. In line with countless prior Policy decisions, the Panel determines that such use constitutes neither “a bona fide offering of goods or services” per Policy paragraph 4(c)(i) nor a “legitimate noncommercial or fair use” of the disputed domain name per Policy paragraph 4(c)(iii). See, Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao,WIPO Case No. D2016-2302; and Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344 (“The Respondent's use of the [disputed] Domain Name for a parking page displaying sponsored links for a variety of goods and services, including for goods and services for which the Complainant’s trademarks have been registered, cannot constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the [disputed] Domain Name...”).
Accordingly, the Panel finds that the aforesaid prima facie case stands and that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As noted above, the Panel has accepted the Complainant’s contention that the disputed domain name is used to host a website which contains pay-per-click links to third party websites that offer services that compete directly with those offered by the Complainant. As it is clear to the Panel that the Respondent’s intent is to gain commercially from those links based upon likely Internet user confusion with respect to the disputed domain name and the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, the Panel concludes that the domain name was registered and is being used by the Respondent in bad faith per Policy paragraph 4(b)(iv). See, Fontem Holdings 4, B.V. v. J- B-, Limestar Inc, supra; and Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474 (“Respondent’s bad faith is further illustrated by the domain name’s resolution to a PPC parking page with links to websites selling products competing with Complainant’s. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith.”).
Also, the Panel agrees with the Complainant’s contention that the public offer to sell the disputed domain name, as evidenced by a notice on the website attached to the name (stating, “Would you like to buy this domain?”), suggests that the Respondent is seeking to profit from a sale price that exceeds the mere costs of registration and maintenance of the name. Thus, the Panel determines that the Respondent registered and is using the domain name in bad faith per Policy paragraph 4(b)(i). See, Bayerische Motoren Werke AG v. Aditya Roshni, Web Services Pty,WIPO Case No. D2015-1110 (“The Panel concludes that the ‘for sale’ notices on Respondent’s websites connected with the disputed domain names are themselves an indication of bad faith, as per paragraph 4(b)(i) of the Policy...”); and BAA plc v. Mr. Nigel Hughes,WIPO Case No. D2001-1358 (“In the light of the Respondent's posting of a ‘For sale’ notice at [the disputed domain name] within days of registration of the disputed domain name...the Panel infers that sale to the Complainant at a profit was the Respondent's primary purpose in registering the disputed domain name. Under paragraph 4(b)(i) of the Policy, this is evidence of both bad faith registration and bad faith use.”).
Accordingly, the Panel finds that the Complainant has shown successfully that the disputed domain name was registered and is being used 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.
Dennis A. Foster
Sole Panelist
Date: January 10, 2018
Full & Egal Universal Law Academy