The Complainant is Early Warning Services, LLC, United States of America, represented by Bryan Cave Leighton Paisner, United States of America.
The Respondent is Contact Privacy Inc. Customer 1242726540 of Canada / Andy Bang, Amer Group Inc, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 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 October 7, 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 amended Complaint on October 12, 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 the Respondent of the Complaint, and the proceedings commenced on October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2020. The Center appointed William R. Towns as the sole panelist in this matter on November 16, 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 Delaware limited liability company with its principal place of business in Scottsdale, Arizona. The Complainant provides electronic payment services utilizing digital payment networks, trading under the “Zelle” name and enabling individuals and companies to transfer money between bank accounts. Some of the world’s largest banks offer the Complainant’s services, including some 800 financial and consumer banking institutions in the United States and other countries around the world. In 2019 alone the Complainant’s services were used to process 743 million transactions totaling USD 187 billion in payments. The Complainant is the holder of multiple United States trademark registrations for its ZELLE, ZELLE NETWORK, and ZELLEPAY marks issued by the United States Patent and Trademark Office (USPTO), including the following: ZELLE, United States Registration No. 5277307, applied for March 9, 2016, and registered August 29, 2017, for financial transaction services; ZELLE (stylized), United States Registration No. 5312400, applied for April 5, 2016, and registered October 17, 2017, for financial transaction services; ZELLE, United States. Registration No. 5449233, applied for August 9, 2016, and registered April 17, 2018, for communication and telecommunication services; ZELLE, United States Registration No. 5449234, applied for August 9, 2016, and registered April 17, 2018, computer software for making payment requests; ZELLE NETWORK, United States Registration No. 5302986, applied for August 15, 2016, and registered October 3, 2017, for financial transaction services; and ZELLEPAY, United States Registration No. 5938276, applied for March 9, 2016, and registered December 17, 2019, for financial transaction services. The English translation of the German word “zelle” is “cell”. The Complainant operates a website at “www.zellepay.com”. The Complainant also has registered other domain names reflecting the Complainant’s ZELLE and ZELLEPAY marks. The disputed domain name The Complainant submits that the disputed domain name The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant maintains that the Respondent is in no manner associated with the Complainant and has not been authorized to use the Complainant’s ZELLE, ZELLE NETWORK, and ZELLEPAY marks (“ZELLE marks”). The Complainant represents that the Respondent has not been commonly known by the disputed domain name, and has no legitimate trademark or service mark rights in the ZELLE mark or similar marks. According to the Complainant, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The Complainant explains that ZELLE is an invented English word that third-parties would not use with the word “pay” unless seeking to create an impression of association with the Complainant. According to the Complainant, the disputed domain name is being used as bait to lure consumers to the Respondent’s website. The Complainant insists that the Respondent must show by “concrete evidence” that it has such rights or interests pursuant to the Policy. The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith in direct violation of the Policy. The Complainant contends that the disputed domain name is designed to trade on the reputation and goodwill of the Complainant and the Complainant’s ZELLE marks for financial gain. The Complainant maintains that when a respondent diverts users to a website to generate traffic and sales commissions for commercial benefit, such conduct has been uniformly recognized as constituting bad faith under the Policy. The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy. The Complainant contends that the disputed domain name is designed to trade on the reputation and goodwill of the Complainant and the Complainant’s ZELLE marks for commercial gain. The Complainant maintains that the disputed domain name wholly incorporates the Complainant’s famous ZELLE mark, and is identical to the Complainant’s primary website, which the Respondent is passively holding as a parked page. The Complainant represents that numerous UDRP decisions have found bad faith under similar circumstances. The Complainant states upon information and belief that the Respondent has no legitimate trademark, service mark or other intellectual property rights in the disputed domain name or any similar marks or names. The Complainant submits that when the disputed domain name is so obviously connected to a particular product or service in which the Respondent has no connection, opportunistic bad faith may be found. The Complainant further contends that the Respondent knew of the Complainant’s long and continuous use of the ZELLE marks when registering the disputed domain name, and knew the Respondent had no right, title or interest whatsoever in the Complainant’s ZELLE marks or the disputed domain name. The Complainant further observes that the Respondent registered the disputed domain name years after the Complainant began offering its ZELLE services at its primary website at “www.zellepay.com”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name The Complainant’s ZELLE and ZELLEPAY marks are clearly recognizable in the disputed domain name.2 When the relevant mark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 TLDs generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The record reflects that the Respondent has not been authorized to register or use the Complainant’s ZELLE and ZELLEPAY marks. The Respondent notwithstanding has registered the disputed domain name, which is identical to the Complainant’s ZELLEPAY mark and confusingly similar to the Complainant’s ZELLE marks. The Respondent presently appears to be passively holding the disputed domain name. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes from the record that the Respondent was aware of the Complainant and had the Complainant’s ZELLEPAY mark in mind when registering the disputed domain name. The disputed domain name is identical to the Complainant’s ZELLEPAY mark and incorporates the Complainant’s ZELLE mark in its entirety. The Respondent’s use of the disputed domain name to redirect Internet users to the Complainant’s website in no way supports a claim of rights or legitimate interests, and the Panel considers that the Respondent in all likelihood did so with the intention of exploiting and profiting from the Complainant’s rights in the ZELLEPAY and ZELLE marks. Having regard to all of the foregoing, and absent any explanation from the Respondent, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name. Nor is there any indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s ZELLE and ZELLEPAY marks clearly in mind when registering the disputed domain name. The Complainant’s ZELLE and ZELLEPAY marks are distinctive and widely known, and the Panel concludes that the Respondent registered and has used the disputed domain names in bad faith, seeking to exploit and profit from the reputation and goodwill of the Complainant’s ZELLE and ZELLEPAY marks. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name William R. Towns 1 SeeWIPO Overview 3.0 , section 1.7 . 2 See WIPO Overview 3.0, sections 1.7 & 1.8, and relevant decisions. 3 Id. 4 See WIPO Overview 3.0 , section 1.11 .
Sole Panelist
Date: November 22, 2020
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