Complainant is ZB, N.A., a national banking association, dba Vectra Bank Colorado, of Denver, Colorado, United States of America (“United States” or “US”), and is represented by TechLaw Ventures, PLLC, United States.
Respondent is Proxy Protection LLC of Brea, California, United States / Eric McGuire of Montgomery, Alabama, United States. 2. The Domain Name and Registrar
The disputed domain names and are registered with eNom, Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2017. On November 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 22, 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 Complainant on November 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 November 30, 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 December 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 26, 2017.
The Center appointed Steven L. Snyder as the sole panelist in this matter on January 23, 2018. 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 word “vectra” does not appear in the online versions of the Merriam-Webster, Cambridge, American-Heritage or MacMillan dictionaries. Perhaps that is why several companies have seized on this word and use “VECTRA” as their mark in connection with a wide variety of products and services, including “computer security systems”, “insect repellents for use on domestic animals”, “cases and coverings for musical instruments” and “three-dimensional imaging systems.” See U.S. Registration Nos. 4809532, 4591576, 4049415, and 3132324.
Complainant also uses “Vectra” as part of its service marks. In March 1996, Complainant registered the domain name . That domain name leads to an interactive website for the bank’s customers and potential customers.
In addition to using the VECTRA BANK mark in commerce, Complainant has obtained registrations for various VECTRA service marks from the United States Patent and Trademark Office (“USPTO”). In 1990, Complainant obtained a registration for the VECTRA mark in connection with banking services based on a first usage of November 16, 1989. See U.S. Registration No. 1604952. In 2000, the USPTO awarded a registration to Complainant for VECTRA BANK and VECTRA BANK COLORADO marks. See U.S. Registration Nos. 2316138, 2354783 and 2361580.
On October 3, 2017, long after Complainant started using the VECTRA BANK mark in connection with banking services, an individual purportedly named Eric McGuire of Montgomery, Alabama, United States, registered the disputed domain names and . The disputed domain names do not resolve to any active website. Mr. McGuire used a third-party, Proxy Protection LLC, to conceal his identity from the public.
On November 20, 2017, Complainant filed its Complaint, in which it seeks to have the disputed domain names transferred to its ownership. Mr. McGuire did not respond to the Complaint. 5. Parties’ Contentions A. Complainant
The Complaint is based on three straightforward arguments.
First, Complainant alleges that the disputed domain names and are confusingly similar to marks in which Complainant has rights. Regarding its rights, Complainant points to its long use of the VECTRA, VECTRA BANK and VECTRA BANK COLORADO marks in commerce and its registrations with the USPTO for those marks.
Regarding confusion, Complainant asserts that the Top-Level Domain (“TLD”) of and must be “disregarded” when assessing whether a disputed domain name is confusing similarity to a mark. When the TLD’s are thrown aside, it becomes evident that the disputed domain names and are indistinguishable from Complainant’s marks.
Second, Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names and . Respondent registered those domain names decades after Complainant started using the VECTRA BANK and VECTRA BANK COLORADO marks in commerce. Complainant averts that Respondent is not a licensee of Complainant’s marks and therefore is not authorized to use them in the disputed domain names. Moreover, there is no evidence that Respondent has ever been known as “Vectrabank” or made any “legitimate noncommercial or fair use” of that mark. Additionally, Respondent ignored Complainant’s cease-and-desist letter.
Third, Complainant argues that Respondent registered and has used the disputed domain names and in bad faith. Regarding the registration, Complainant points to the fact that it used and registered the VECTRA BANK and VECTRA BANK COLORADO marks long before Respondent registered the disputed domain names. Respondent was surely aware of these marks and registered the disputed domain names in order 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.”
Regarding the usage, Complainant acknowledges that Respondent has not yet linked the disputed domain names to live websites but argues it has ample evidence of bad faith: “Complainant sent to Respondent a letter demanding that it cease and desist any infringing or potentially infringing activities with respect to Complainant’s registered marks and to inquire what right or legitimate interest it had in, and how it intended to use, the Domain Names. Respondent has failed to respond or otherwise provide evidence of any right or legitimate interest in the Domain Names. This indicates that Respondent registered and is using the Domain Names to exploit Complainant’s trademarks and shows bad faith.” Additionally, Complainant notes that Respondent sought to hide his identity by using a proxy service for the registrations of the disputed domain names.
Based on these arguments, Complainant maintains it has met its burden under the Policy and that the disputed domain names and should be transferred to its ownership. B. Respondent
Respondent did not file a Response to Complainant’s Complaint. 6. Discussion and Findings
Brigham Young is better known as an inspiring religious leader than as a banker, but it was under his direction that the Zion’s Saving Bank and Trust Company was opened in the fall of 1873. During the first day of operations, the bank reportedly recorded deposits of USD 5,876. That modest institution grew into what is now known as ZB, N.A., a corporation which has billions in assets, operations in nearly 500 financial centers across the western part of the United States, and the status of being one of the 50 largest banks in the United States. Along the way, the bank started using the VECTRA BANK and VECTRA BANK COLORADO marks – which use has attracted the attention of both customers and cybersquatters. A. Identical or Confusingly Similar
Service mark rights in the United States, where both Complainant and Respondent are located, are gained by usage of a mark in commerce. Those rights are further burnished by obtaining registrations from the USPTO. Complainant has introduced evidence, without contradiction, that is uses the VECTRA BANK and VECTRA BANK COLORADO marks in commerce in connection with “banking services” and that it has obtained several registrations from the USPTO for these marks. See U.S. Registration Nos. 1604952, 2316138, 2354783 and 2361580.
Clearly, Complainant has rights in the VECTRA BANK mark. Just as clearly, the disputed domain names and are confusingly similar to Complainant’s mark.
As Complainant has correctly argued, the TLDs of and are not considered when assessing whether there is confusing similarity between a complainant’s mark and a respondent’s domain name. See WIPO Jurisprudential Overview 3.0, section 1.11.1 (“The applicable Top Level Domain is viewed as a standard registration requirement and as such is disregarded under the confusing similarity test.”); accord, Navasard Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Andy Bornd,WIPO Case No. D2017-1181 (citing section 1.11.1).
With the TLDs sitting on the bench, all that is left of the disputed domain names is VECTRABANK – which is identical to Complainant’s mark of VECTRA BANK. Complainant has established the first element under the Policy. B. Rights or Legitimate Interests
There are many other persons and organizations that have rights and legitimate interests in the VECTRA mark. As noted above, this mark is used to identify the source of a wide variety of products and services. See U.S. Registration Nos. 4809532, 4591576, 4049415, and 3132324. There may even be another person or organization with the right to use the VECTRABANK mark -- but Respondent is not that person.
Decades after Complainant started using the VECTRA BANK and VECTRA BANK COLORADO marks in commerce and obtained federal registrations for those marks, Respondent registered the disputed domain names. Complainant asserts that Respondent is not one of its authorized licensees and that he has no rights in its VECTRA marks. Respondent has not bothered to dispute that assertion. Indeed, Respondent has not bothered to do much: He registered the disputed domain names and but has made no use of them; he apparently received Complainant’s cease-and-desist letter in October 2017 but failed to respond, and Respondent allowed the Complainant’s prima facie case to go unchallenged.
Respondent’s record of inaction supports the Panel’s conclusion that he has no rights or legitimate interests in the disputed domain names: “A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.” Banco Itau S.A. v. Laercio Teixeira; accord,WIPO Case No. D2007-0912; WIPO Overview 3.0, section 2.1 (reflecting view that respondent’s failure to rebut complainant’s prima facie case allows finding in complainant’s favor).
Complainant has established the second element under the Policy. C. Registered and Used in Bad Faith
The arguments supporting the third element under the Policy are echoes of the previous arguments:
Long after Complainant began using the VECTRA BANK and VECTRA BANK COLORADO marks in public and obtained federal registrations, Respondent deliberately registered two confusingly similar domain names. He did not do this inadvertently, but rather acted with a malicious intent to somehow illicitly profit from the goodwill which Complainant has created in its VECTRA BANK marks. In support of this scheme, Respondent used a proxy service to hide his true identity.
Respondent has not deigned to make any argument in his favor. If he is relying on the fact that he never linked the disputed domain names to a website, that reliance is misplaced. Even non-use of a domain name may be evidence of bad faith: “Since the very earliest days of the Policy panels have repeatedly held that in appropriate circumstances non-use of a domain name (often called passive use or warehousing) may constitute bad faith for purposes of paragraph 4(a)(iii).” Pfizer Inc. v. Registration Private, Domains By Proxy, LLC / Jenny Tran,WIPO Case No. D2016-2067; accord, WIPO Overview 3.0, section 3.3 (“the non-use of a domain name … [does] not prevent a finding of bad faith”). This position makes sense: A thief uses stolen treasure in bad faith whether he spends it or stashes it away out of sight.
Based on the facts in the record, it is reasonable to conclude that Respondent has registered and is using the disputed domain names in bad faith and that Complainant has established the third element under 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 names and be transferred to the Complainant.
Steven L. Snyder
Sole Panelist
Date: February 1, 2018
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