Complainant is Zions Bancorporation, N.A., a national banking association, dba Zions First National Bank, United States of America (“United States”), represented by TechLaw Ventures, PLLC, United States.
Respondent is Domains by Proxy, LLC / N. N., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2020. On July 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 7, 2020 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 July 7, 2020. The Center verified that the Complaint together with the amended 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 July 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2020. On July 24, 2020, Complainant requested the suspension of the proceedings for 30 days. The Proceedings were suspended until August 23, 2020. On August 21, 2020, Complainant sent requested an additional 30-day extension to the suspension to finalize the settlement. The proceedings were suspended until September 22, 2020. On September 18, 2020, Complainant requested an additional extension for the parties to finalize the settlement agreement. The proceedings were then suspended until October 23, 2020. On October 20, 2020, Complainant requested an additional 10-day extension to finalize the settlement agreement. On October 23, 2020, Complainant withdrew its request to extend the suspension and requested the reinstitution of the proceedings. On October 26, 2020 the proceedings were reinstituted and the new due date for the Response was November 4, 2020. Respondent sent informal communications to the Center on July 13, 2020; July 20, 2020; October 20, 2020; October 23, 2020; and October 27, 2020. An incomplete Response was filed with the Center on November 5, 2020, and further submissions were received from Respondent on November 10 and November 30, 2020. The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 23, 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 Complainant is a national banking association and the owner of the following trademarks registered with the United States Patent and Trademark Office: - ZIONS BANK, registration no. 2,381,006, registered August 29, 2000 Zions Bancorporation, the predecessor in interest to Complainant, was the original applicant and registrant of these trademarks, but Zions Bancorporation subsequently assigned the marks to Complainant. Complainant’s marks are in use and were registered for - “financial services, namely banking, mortgage lending and banking, trusteeship representatives, investment management services, escrow services, namely holding stock certificates until paid, estate and probate trust management, federal and municipal bond underwriting services and federal and municipal bond brokerage services, financial analysis and consultation, and bond private placements, namely finding and arranging for purchasers to buy bonds and advising municipalities on bond structuring;” - “financial services namely banking;” and - “financial services, namely banking, securities brokering, mortgage lending and banking, trusteeship representatives, investment management services, escrow services, namely holding stock certificates until paid, estate and probate trust management, insurance agencies and brokerage in the fields of property, casualty, life, health and disability insurance and bonding services, federal and municipal bond underwriting services and federal and municipal bond brokerage services, bond private placements, namely finding and arranging for purchasers to buy bonds, lease-purchase financing, and financial analysis and consultation”. Complainant does business under the name Zions First National Bank, and has been doing business under this name since June 12, 1890. Since July 5, 1995, Zions Bancorporation, the parent of Complainant, has been the registrant of the domain name The Domain Name was registered on June 26, 2020. Respondent used a privacy service to register the Domain Name and was later disclosed to be “N N” with a purported P.O. Box address in Fort Benning, Georgia. The Domain Name resolves to a parking page displaying pay-per-click (“PPC”) links advertising services competitive with Complainant’s services. 5. Parties’ Contentions A. Complainant (i) Identical or confusingly similar Complainant states that a side-by-side comparison of the Domain Name and Complainant’s registered mark ZIONS shows that the identical mark is included and recognizable in the Domain Name. Complainant contends that the threshold test for confusing similarity under the UDRP involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The Domain Name also includes the dominant part of Complainant’s registered marks ZIONS BANK and ZIONSBANK.COM. Complainant states the Domain Name is confusingly similar to these registered marks. Complainant argues that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP. By including Complainant’s registered ZIONS mark and the dominant part of Complainant’s registered ZIONS BANK and ZIONSBANK.COM marks, Complainant claims Respondent is intentionally creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website for commercial gain. Complainant states the only difference between its registered ZIONS mark and the Domain Name is the new generic top-level domain (“gTLD”), “.one”. Under the confusing similarity test, the gTLD is disregarded. Accordingly, the gTLD “.one” should be disregarded in this matter. Complainant submits that Respondent’s use appears to be an effort to take advantage of users seeking to find Complainant’s domain name (ii) Rights or legitimate interests Complainant contends that Respondent has no rights or legitimate interests in the Domain Name for the following reasons: - Complainant has been using its ZIONS mark in commerce since as early as 1891, and obtained federal registration for the mark on August 29, 2000. Complainant has been using its ZIONS BANK mark in commerce since at least as early as 1992, and obtained federal registration for such mark on August 29, 2000. Complainant has been using its ZIONSBANK.COM mark in commerce since at least as early as 1995, and obtained federal registration for such mark on January 22, 2002. Based on the WhoIs database information, Respondent acquired the registration for the Domain Name no earlier than June 26, 2020. - Complainant has unaware of any evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name, or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Instead, the Domain Name resolves to a website that is displaying a mark that is confusingly similar to Complainant’s registered mark and is advertising services that are identical to some of the services that Complainant provides. Complainant contends that use of a complainant’s trademark in a domain name to redirect users to respondent’s website does not support a claim to rights or legitimate interests. Further use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s marks or otherwise mislead Internet users. - Complainant is not aware that Respondent, as an individual, business, or other organization, has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights. - Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the Domain Name; rather, Respondent’s use of the Domain Name appears to be with the intent for commercial gain by misleadingly diverting consumers to Respondent’s website associated with the Domain Name. Such use of the Domain Name may tarnish Complainant’s registered trademarks. - Respondent is not a licensee of Complainant’s trademarks, and has not otherwise obtained authorization to use Complainant’s marks. If the use of a disputed domain name in any event is abusive of third-party trademark rights, the use of the disputed domain name does not support a claim to rights or legitimate interests under the UDRP. - Respondent is not using the Domain Name as part of a bona fide offering of goods or services or for a legitimate noncommercial use. (iii) Registered and used in bad faith Complainant contends that Respondent registered and is using the Domain Name in bad faith for the following reasons: - Respondent registered the Domain Name that includes (i) the registered mark ZIONS and (ii) the dominant part of Complainant’s registered marks ZIONS BANK and ZIONSBANK.COM, and the Domain Name is confusingly similar to these marks. The dominant part of the Domain Name is identical to Complainant’s federally registered mark ZIONS. The use of virtually identical or similar marks in the Domain Name indicates that the Domain Name was registered primarily for the purpose of disrupting the business of Complainant, and appears to be intended to take advantage of the goodwill associated with Complainant’s federally registered trademarks. - Complainant contends that Respondent is clearly trying 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 by creating a likelihood of confusion with Complainant’s trademarks. By including Complainant’s identical registered trademark as the dominant part of the Domain Name, Respondent is intentionally creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. - Complainant asserts that bad faith registration can be found where the domain name is identical or confusingly similar to a complainant’s registered trademarks. As previously noted, the Domain Name resolves to a website that displays Complainant’s trademarks and links to services that compete with those provided by Complainant. The use of Complainant’s marks in the Domain Name and on Respondent’s website is misleading and may divert consumers to Respondent’s website instead of Complainant’s official and authorized website. - Complainant contends that its registered marks were well known and in wide use at the time the Domain Name was registered. By using Complainant’s registered mark ZIONS as the Domain Name, Respondent knew or should have known about Complainant’s registered marks at the time it registered the Domain Name. Complainant states that bad faith registration of a domain name can be found when the respondent knew or should have known about the existence of the complainant’s trademarks, especially where the complainant’s marks are widely known (including its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark. Additionally, the nature of the domain name or any use of the domain name may obviate a respondent’s claims to not have been aware of the complainant’s marks. Respondent knows or should have known of Complainant’s rights in its trademarks, Complainant’s trademarks are distinct, and the content of Respondent’s website clearly targets Complainant’s trademarks. - Complainant asserts that Respondent is responsible for the content appearing on the website associated with the Domain Name, even in this case where Respondent’s website posts PPVC advertising links on an automatically generated basis, and Respondent has apparently not made any good faith efforts to prevent the inclusion of advertising links on such website. Because Respondent’s website is accessed using the Domain Name, which includes Complainant’s trademarks, or the dominant part of Complainant’s registered trademarks, the use of the Domain Name is misleading, and Respondent may use it in connection with various phishing and fraudulent activities. Respondent’s use of Complainant’s marks may tarnish Complainant’s trademarks. - Complainant states that while the UDRP does not operate on a strict doctrine of binding precedent, panelists strive for consistency with prior decisions and seeks to ensure the UDRP operates in a fair and predictable manner. Complainant states that it, or its affiliates, have prevailed on several prior complaints for domain names that include Complainant’s registered marks and are similar to the Domain Name and under circumstances similar to the underlying action. Complainant provided an extensive listing of these prior decisions, where the disputed domain names were transferred to Complainant. B. Respondent Respondent submitted an incomplete set of documents on November 5, 2020, one day after the due date set for the Response, with further submissions sent to the Center on November 10 and November 30, 2020. On November 5, 2020, Respondent submitted several annexes with a document labeled “Response”, but which was, in fact, only a notarized single signature page with an illegible signature. Respondent submitted additional annexes on November 10. Respondent’s complete Response was not received until November 30, along with certain additional (or re-sent) annexes. The Rules make no express provision for the late or supplemental filing of materials by either party, except as may be specifically requested by the Panel. Further, paragraph 12 of the Rules provides that the Panel has sole discretion to consider whether or not to accept any late-filed or supplemental materials from the parties. Here, the Panel has reviewed the materials submitted by Respondent. The Panel has found, however, that most of the materials submitted were unintelligible, with information crossed out so it could not be read, and other statements presented that were either incoherent, opaque, referenced obscure and unrelated religious materials, or were inapposite and non-responsive to the criteria set forth in the Policy. As an example, with regard to the first element of the UDRP, Respondent claims as follows: “Respondent, a living entity, of The Tribe of Benjamin, of The House of Israel, possesses Sovereign rights and legitimate interests, unregistered trade and service marks, and claims Indigenous intellectual property rights pertaining to but not limited to " Zion", (Jerusalem, Israel), corresponding names or domain names, and reserves all rights and legitimate interests.” Regarding the second element, as a further example, Respondent states that: “Respondent is: and that “For this preparation, use, of Domain name, "zions.one" , or corresponding name(s), "Zion'sOne","Zion", the Respondent, held in reserve (foreordained) to come at the fullness of time, Latter-Days, for the intended purpose to Gather the Children of Israel ("spoil" of The Lord), as Moses, Finally, the following is a quote from one of the concluding paragraphs of the Response: “No one comes unto Zion unless led and directed by The Hand of God ("Source") in Righteousness, by Righteousness and Faithfulness it is to be maintained ("Sponsorship"). Sovereign rights and legitimate interests, unregistered trade or service marks, and Indigenous Intellectual Property rights, are fully vested in The Respondent, of The Tribe of Benjamin. "Endorsement" of God is The Hope, in whom we "affiliate".” The Panel also notes that Annex 4 to the Response, submitted by Respondent, contains email correspondence of settlement discussions between the parties. The Panel observes that in the UDRP context, panels tend to view settlement discussions as “admissible”, particularly insofar as such discussions may be relevant to assessing the parties’ respective motivations. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.10. In this case, Respondent – known only as “N N” – purportedly had a “friend” communicate on Respondent’s behalf in the settlement discussions, denying Complainant’s claims. It appears that Respondent (or Respondent’s friend) asserted that the Domain Name was registered so that it could be offered to a religious non-profit organization, “ZionsOne”, but this information is neither clear nor reliably presented. Moreover, it appears that the settlement discussions ultimately failed because, among other things, Respondent would not identify himself or herself to Complainant, except for the initials “N N”. 6. Discussion and Findings In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has established rights in its ZIONS, ZIONS BANK, and ZIONSBANK.COM trademarks, based on Complainant’s trademark registrations and widespread use of its marks. Further, the Panel determines that the Domain Name is virtually identical to Complainant’s ZIONS mark, and confusingly similar to Complainant’s ZIONS BANK and ZIONSBANK.COM marks, where ZIONS is the dominant element. As WIPO Overview 3.0, section 1.7, states: “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The gTLD “.one” in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, section 2.1 of WIPO Overview 3.0 states that “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”. Here, the Panel determines that Complainant has made out a prima facie case, while Respondent’s submissions have failed to sufficiently rebut Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its ZIONS, ZIONS BANK, or ZIONSBANK.COM trademarks; that Respondent is not commonly known by the Domain Name – Respondent has only identified him or herself as “N N”; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used to resolve to a landing webpage with links that purport to (or do) redirect Internet users to services competitive with Complainant’s financial services. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it. Respondent’s raises in the Response that there are approximately 2,400 references to the name "Zion" or "Sion" in Bible, and that it should be considered “synonymous with Jerusalem, Israel, and Holy domains whether land or heaven above, a righteous people, and utopian societal lifestyle.” However, the Panel observes that Respondent did not choose the singular case for the word “Zion” as it might appear in usage, but instead chose to add an “s”, which makes the term identical not only to Complainant’s ZIONS mark, but also to the dominant element in Complainant’s ZIONS BANK or ZIONSBANK.COM marks. Respondent further states in the Response as follows: “On the Night of June 26th, 2020 (pursuant to the global pandemic and worldwide public announcements directed by the Prophet of The Church in late March-early April 2020), "in an effort to [provide] meaningful service" and "assist in The Gathering to save all those who would be saved", the Registrant purchased the domain name "zions.one" to donate, as future home of Nonprofit entity, Zion’sOne, because The Lord has Need of.” The Panel is unable to afford weight to submissions, such as this one, with (in addition to extensive and obscure religious allusions) make unverifiable reference to the possible future home of an alleged non-profit entity, ZionsOne. Respondent in its Annex 3 did include the record of a company registered with the Texas Secretary of State, but all of the details concerning the individual or entity who might have registered the business are redacted so that they are unreadable. Thus, it is not clear that this document pertains to a company or entity registered by Respondent, or one that has any relationship to Respondent. Moreover, there is no evidence to indicate whether this record is authentic or merely copied from some source. In view of the entire record in this case, the Panel cannot determine, with sufficient evidentiary basis, that Respondent’s submissions are responsive to the UDRP criteria – especially noting the use of “zions” instead of “zion” and the PPC links appearing on the related web page. As noted above, the Panel has found that most of the materials submitted were unintelligible, with identifying information crossed out so it could not be read, and other statements presented that were incoherent and referenced unrelated religious materials, which were non-responsive to the criteria for decision set forth in the Policy. Moreover, Respondent has been unwilling to identify himself or herself to Complainant and to the Center. Under these unique circumstances, the Panel is unwilling to credit Respondent’s submissions to justify a finding of intended noncommercial or fair use of the Domain Name, thereby supporting any rights or legitimate interests in it. In this regard, WIPO Overview 3.0, section 2.2 provides relevant guidance: “If not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence.” Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been adequately rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. Section 3.1 of the WIPO Overview 3.0 states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Name was registered and is being used in bad faith. As previously stated, the Domain Name fully incorporates Complainant’s distinctive trademark ZIONS, as well as incorporating the dominant element in Complainant’s marks, ZIONS BANK and ZIONSBANK.COM. Complainant has established that its 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 Domain Name by almost 20 years. Moreover, Respondent chose to register the Domain Name, which adds an “s” to the term “zion,” thereby creating an unusual usage that is identical to Complainant’s marks, as compared with the singular form, which can be a name used in the Bible to refer to Jerusalem or Israel. Moreover, Respondent’s submissions make many references to The Church of Jesus Christ of Latter-day Saints, informally known as the Mormon Church. It appears from Respondent’s submissions that he or she is aware of the Mormon Church and might be a member. This information, along with the reputation of Complainant’s marks and Respondent’s use of the unusual plural term “zions” in the Domain Name, supports an inference that Respondent was likely aware of Complainant, with its principal operations in Utah, where the Mormon Church headquarters is located. Based on all of this evidence, the Panel finds there is a strong possibility that Respondent was aware of Complainant and its trademarks when registering the Domain Name. The Panel therefore is of the opinion that the Respondent registered the Domain Name, based on the evidence of record and inferences drawn therefrom, not for a legitimate noncommercial or fair use, but especially noting the links to financial services risks disrupting Complainant’s business and misleading Internet users looking for the Complainant’s services. See, e.g., ZB, N.A., a national banking association, dba Zions First National Bank v. Domain Admin, C/O ID#10760, Privacy Protection Service Inc d/b/a PrivacyProtect.org / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd, WIPO Case No. D2017-1176; Zions Bancorporation v. Ryan G Foo / PPA Media Services, WIPO Case No. D2014-1797. The Panel moreover notes that Respondent used a privacy service to conceal its identity and continued to refuse to identify himself or herself after the Complaint was filed. Regarding use in bad faith, Complainant has shown that the Domain Name resolved to website featuring PPC links relating to Complainant’s activities as well as to competitors’ services, which cannot amount to a use of the Domain Name in good faith. In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of 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 Domain Name, /Christopher S. Gibson/
- ZIONSBANK.COM, registration no. 2,531,436, registered January 22, 2002
- ZIONS, registration no. 2,380,325, registered August 29, 2000.
- a spirit child of Heavenly Father,
- of Jesus the Christ, of The Tribe of Judah,
- of the lineage of The Tribe of Benjamin, and of The Tribe of Joseph, of The House of Israel, (Jacob), of Isaac, of Abraham…of Adam.”
Ordered their respective tribes, United under The Pavilion of One, Christ-Jehovah.”
Christopher S. Gibson
Sole Panelist
Date: December 15, 2020
Full & Egal Universal Law Academy