The Complainant is Zions Bancorporation, N.A., United States of America (“United States”), represented by TechLaw Ventures, PLLC, United States.
The Respondent is Contact Privacy Inc. Customer 1246235259, Canada / Don Hunter, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2020. On January 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2020, 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 January 24, 2020 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 January 24, 2020. 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 January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on February 24, 2020. 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 is a United States national banking association, which has been doing business under the name Zions First National Bank since 1890. The Complainant is the owner of the following trademark registrations (the “ZIONSBANK trademark”): - the United States trademark ZIONS BANK with registration No. 2,381,006, registered on August 29, 2000 for services in International Class 36; and - the United States trademark ZIONSBANK.COM, with registration No. 2,531,436, registered on January 22, 2002 for goods and services in International Class 36. The parent company of the Complainant is the registrant of the domain name The disputed domain name was registered on January 10, 2020. It resolves to an inactive page. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s ZIONSBANK trademark, because this trademark is incorporated in the disputed domain name and is easily recognizable in it, with the addition of the terms “customer” and “service”. These additional words exacerbate the likelihood of confusion to the ZIONSBANK trademark and suggest the provision of customer service related to the Complainant’s banking services. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that it has been using its ZIONSBANK trademark in commerce for many years, and the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant points out that the Respondent is not commonly known by the disputed domain name and has not been licensed by the Complainant to use the ZIONSBANK trademark. According to the Complainant, the Respondent is using the disputed domain name with the intent for commercial gain to misleadingly divert consumers to the Respondent’s website associated with the disputed domain name. The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. According to the Complainant, since the dominant part of the disputed domain name is identical to the Complainant’s ZIONSBANK trademark, this indicates that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, and is intended to take advantage of the goodwill associated with the Complainant’s ZIONSBANK trademark by creating a likelihood of confusion with this trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant adds that the nature of the disputed domain name or its use may obviate any claims of the Respondent to not have been aware of the Complainant’s ZIONSBANK trademark, and points out that the email address of the Respondent, which includes the sequence “zionsbankonlinepaymentverify”, indicates that the Respondent is aware of the ZIONSBANK trademark and may be using the disputed domain name for phishing or other fraudulent activities. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (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 Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …” The Respondent has however not submitted a Response in this proceeding and has not disputed the arguments of the Complainant and the evidence that it has put forward. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the ZIONSBANK trademark for the purposes of the Policy. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.online” gTLD section of the disputed domain name. As discussed in sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. Where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive terms would not prevent a finding of confusing similarity under the first element. The nature of such additional terms may however bear on assessment of the second and third elements. The disputed domain name incorporates the ZIONSBANK trademark in its entirety with the addition of the dictionary words “customer” and “service”. The addition of these words does not prevent a finding of confusing similarity between the disputed domain name and the ZIONSBANK trademark, because the latter is easily recognizable in the disputed domain name. Therefore, the Panel finds that the disputed domain name is confusingly similar to the ZIONSBANK trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that it has not authorized by the Complainant to use the ZIONSBANK trademark, is not commonly known by the disputed domain name and has no trademark rights in it. The Complainant also points out that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name. According to the Complainant, the Respondent is using the disputed domain name with the intent for commercial gain to misleadingly divert consumers to the Respondent’s website associated with the disputed domain name. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not disputed the statements of the Complainant and has not alleged that is has rights and legitimate interests in the disputed domain name. The disputed domain name incorporates the ZIONSBANK trademark in its entirety with the addition of the dictionary words “customer” and “service”. The inclusion of these words may indeed create the impression that the disputed domain name refers to a website of the Complainant where it provides customer services to its clients. In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the ZIONSBANK trademark, has registered the disputed domain name in an attempt to exploit the trademark’s goodwill by attracting the Complainant’s clients for commercial gain by misleading them that they are accessing an online location of the Complainant where they may receive customer services. In the Panel’s view, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you 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 complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” As discussed above, the disputed domain name is confusingly similar to the ZIONSBANK trademark and includes the dictionary words “customer” and “service”, which may confuse the Complainant’s clients that it resolves to a website of the Complainant where they may receive customer services. The email address of the Respondent, as confirmed by the Registrar, contains the sequence “zionsbankonlinepaymentverify”. In view of this, the Panel is satisfied that it is more likely than not that the Respondent is aware of the Complainant’s banking services under the ZIONSBANK trademark. As submitted by the Complainant, these circumstances also indicate a risk that the Respondent may be using the disputed domain name jointly with its email address for phishing or other fraudulent activities. Taking the above into account, and in the absence of any evidence to the contrary, the Panel accepts that the Respondent has registered and used the disputed domain name targeting the ZIONSBANK trademark. It is likely that by creating a likelihood of confusion with the Complainant’s ZIONSBANK trademark and an appearance that the disputed domain name and the Respondent’s email address are related to the provision of customer services to the Complainant’s clients, the Respondent has attempted to attract traffic to the disputed domain name and confuse the Complainant’s customers and other Internet users that they are reaching an online location of the Complainant, likely for commercial gain. In these circumstances, it also cannot be excluded that confidential data may be collected from confused and unsuspecting Internet users who have accessed the Respondent’s website in the belief that it is associated to the Complainant. Therefore, the Panel finds that the disputed domain name has been registered and 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 Assen Alexiev
Sole Panelist
Date: March 4, 2020
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