The Complainant is Early Warning Services, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.
The Respondent is Barry Friedman, Seaport 17th Care Center, United States, represented by Cislo and Thomas LLP, United States. 2. The Domain Names and Registrars
The disputed domain name The disputed domain name 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 names. On October 6, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. On October 13, the Respondent sent an informal email communication. On October 29, 2020, the Respondent requested an extension of time to respond. On October 29, 2020, the Complainant submitted an opposition to the Respondent’s Request for extension of time. On October 30, 2020, the Center granted the automatic four calendar day extension for Response under paragraph 5(b) of the Rules. The due date for Response was set for November 6, 2020. The Response was filed with the Center on November 6, 2020. On November 11, 2020, the Complainant submitted a Supplemental Filing. On November 13, 2020, the Center received a reply from the Respondent in response to the Complainant’s Supplemental Filing. The Center appointed William R. Towns as the sole panelist in this matter on November 10, 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 consumer banking institutions in the United States. 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 Reg. No. 5277307, applied for March 9, 2016, and registered August 29, 2017, for financial transaction services; ZELLE (stylized), United States Reg. No. 5312400, applied for April 5, 2016, and registered October 17, 2017, for financial transaction services; ZELLE, United States. Reg. No. 5449233, applied for August 9, 2016, and registered April 17, 2018, for communication and telecommunication services; ZELLE, United States Reg. No. 5449234, applied for August 9, 2016, and registered April 17, 2018, computer software for making payment requests; ZELLE NETWORK, United States Reg. No. 5302986, applied for August 15, 2016, and registered October 3, 2017, for financial transaction services; and ZELLEPAY, United States Reg. 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 names were registered by the Respondent on various dates. The Respondent registered the disputed domain name At the time the Respondent registered the disputed domain name The disputed domain names presently do not resolve to active websites. Prior to the filing of the Complaint the disputed domain names resolved to parked pages featuring pay-per-click (“PPC”) advertising links such as “Pay My Bill”, “My Bill”, and “Pay Bill.” The disputed domain names also have been advertised for sale on GoDaddy’s Domain Buy Service. 5. Parties’ Contentions A. Complainant i. Complainant The Complainant submits that the disputed domain names The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant maintains that the Respondent is in no way associated with the Complainant and has not been authorized to use the Complainant’s ZELLE, ZELLE NETWORK, and ZELLEPAY marks (“ZELLE marks”). The Complainant further contends that the Respondent has not been commonly known by any of the disputed domain names, and has no legitimate trademark or service mark rights in the ZELLE marks or in similar marks. The Complainant reiterates that two of the disputed domain names are identical to the Complainant’s ZELLE mark, and submits that the descriptive word “pay” in 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 names are being used as bait to lure consumers to the Respondent’s click-through site. 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 names in bad faith in direct violation of the Policy. The Complainant contends that the disputed domain names are designed to trade on the reputation and goodwill of the Complainant and the Complainant’s ZELLE marks for commercial 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 maintains that the Respondent is passively holding the parked pages with links to third party commercial websites, some of which compete with the Complainant’s services. The Complainant represents that numerous UDRP decisions have found bad faith under similar circumstances. The Complainant states upon information and belief that the disputed domain names are being offered for sale by the Respondent and prominently advertised as such. The Complainant asserts that the Respondent acquired the disputed domain names for the purpose of selling or otherwise transferring them to the Complainant or a third party for valuable consideration in excess of the Respondent’s reasonable registration costs. The Complainant reiterates upon information and belief that the Respondent has no legitimate trademarks, service marks, or other intellectual property rights in or to the disputed domain names. The Complainant contends that the Respondent’s bad faith is evinced by the Respondent’s complete absence of intellectual property rights in the disputed domain names when acquiring them, and submits that the Respondent is guilty of “opportunistic bad faith.” The Complainant makes reference to a reverse WhoIs search, which according to the Complainant reveals that the Respondent has registered over 300 domain names, a number of which consist of famous trademarks or slight misspellings thereof. ii. Complainant’s Supplemental Filing The Complainant contends that the Respondent has presented numerous new issues and arguments in the Response. According to the Complainant, these new issues and arguments include post-filing content changes, falsified declarations, and a claim of reverse domain name hijacking. Having reviewed the Complainant’s unsolicited eight-page supplemental filing and further attachments, the Panel summarizes the Complainant’s supplemental submission as follows: The Complainant submits that the Respondent has registered domain names that incorporate trademarks of other companies. The Complainant contends that the Respondent was aware of the Complainant’s ZELLE payment system when registering the disputed domain names, first used the ZELLE service in 2017, and used the service on subsequent occasions. The Complainant maintains that the Respondent’s email and telephone number are in fact the Respondent’s ZELLE account. The Complainant explains that the Complainant’s in-house counsel by registered email dated August 28, 2018, objected to the Respondent’s registration of the dispute domain name The Complainant contends that the disputed domain names contained pay-per-click advertising links to third-party websites, some competing with the Complainant’s services and advertised for sale. The Complainant submits the Respondent is responsible for the content to which the disputed domain names resolve. The Complainant further contends that the Respondent registered numerous domain names incorporating famous trademarks in May 2018 and February 2019. B. Respondent i. Response The Respondent denies that the disputed domain names were acquired in bad faith. The Respondent asserts that the ZELLE trademark is used by a multitude of others. According to the Respondent, this is not surprising as “zelle” is German for “cell” and a popular Jewish name. The Respondent maintains that the disputed domain names were registered by the Respondent shortly after the Complainant started doing business, and that when the Respondent acquired the disputed domain names he had never heard of the Complainant. The Respondent submits that “Zelle” is the first name of a deceased family member, and that the disputed domain names were registered with the intention of there being used to raise funds for the Respondent’s synagogue in honor of the family member. The Respondent reiterates that “Zelle” is a common Jewish name, and represents that many others are using ZELLE as a trademark and as a domain name. The Respondent states that the disputed domain names have never been used by him. Further, according to the Respondent, the alleged offer to sell the disputed domain names was a default setting of GoDaddy, and has since been corrected. The Respondent asserts that the Complainant had the Respondent’s correct contact information from as early as June 2018. The Respondent contends that the Complainant would have been aware of the Respondent’s registration of the disputed domain names for over two years, but for over two years had never contacted the Respondent. The Respondent acknowledges that the Complainant has some trademark rights in the ZELLE mark and further acknowledges that each of the disputed domain names comprise the word “ZELLE.” However, the Respondent submits that cybersquatting requires that the Complainant demonstrate ownership of a distinctive or famous mark entitled to protection; that the disputed domain names be identical or confusingly similar to the Complainant’s mark; and that the Respondent have registered the disputed domain names with bad faith intent to profit from it. The Respondent submits an exemplary table of third party registrations for ZELLE identified in a WIPO trademark search, and also refers to other ZELLE-formative marks, suggesting there are likely even more uses of ZELLE. The ZELLE registrations were registered in Mexico, the Republic of Korea, European Union, Australia, and Chile. The Respondent argues that mere allegations by the Complainant disputing the Respondent’s rights or legitimate interests in the disputed domain names are not sufficient. The Respondent insists that the disputed domain names were acquired for the Respondent’s own personal interests, and that as previously noted the Respondent intended eventually to honor Zelle by raising funds for the synagogue. The Respondent represents that the synagogue is a not for profit charity. The Respondent maintains that he owns and operates many businesses, and opines that owning a domain name or even several domain names is not unlawful. The Respondent remarks that the fact he has passively held the disputed domain names since their registrations does not mean he does not intend to use them. The Respondent attributes the global pandemic to “slowing lots of roll out,” but then remarks that it really does not matter why he is holding the disputed domain names and why he has not used them. The Respondent submits the Complainant has brought forth no evidence demonstrating that the Respondent registered and is using the disputed domain names in bad faith. The Respondent denies that the disputed domain names were registered in order to sell them, referring to screenshots of the web pages displayed, and asserting that any domain name inserted into GoDaddy’s search bar will result in the domain name being offered for sale at USD 69.99. The Respondent remarks that registrars commonly use parked pages as placeholders until replaced by a website, and that registrars may monetize parked pages without the consumer’s awareness. The Respondent insists in any event that the disputed domain names are not monetarily valuable, submitting that the purchase price of the disputed domain name runs from USD 0.99 to USD 19.99. The Respondent states he was unaware that the parked page had a for sale banner at the top. The Respondent insists that owning the disputed domain names is not a money grab or attempt to divert Internet traffic to pay-per-click websites. The Respondent casts fault on a computer algorithm put in place by GoDaddy. The Respondent reiterates he was not even aware that the web pages had a for sale banner on top. The Respondent again remarks that the Complainant easily could have contacted the Respondent and addressed any concerns. The Respondent submits that the Panel should find reverse domain name hijacking (“RDNH”), contending that the Complainant should have known it could not succeed on any of the three elements of the complaint. The Respondent contends that the Complainant knew it did not have exclusive rights in the ZELLE mark, knew that the content displayed was a result of GoDaddy’s default settings, and ignored the requirements for establishing bad faith registration and use of the disputed domain names. ii. Respondent’s Supplemental Filing The Respondent insists that the Complainant has not produced any signed documents, e-documents or downloads demonstrating that the Respondent knowingly maintained a Zelle account for payment transfers. The Respondent submits that Zelle’s payment exchange system is directly embedded within mobile banking channels (apps), such as Wells Fargo and Bank of America. The Respondent maintains there is no evidence to contradict his claim never to have used Zellepay for his account. The Respondent remarks that were his bank using Zellepay for his account there would be no evidence to contradict the statement that he had no knowledge of the Complainant when acquiring the disputed domain names. The Respondent explains there was no need to respond to the notice letter from the Complainant’s representative because the Respondent did not intend to sell the disputed domain names. The Respondent explains that he would not have contacted the Complainant’s representative if he intended to sell the disputed domain names as the Complainant alleges. The Respondent asserts he never said the name of the synagogue was “Zelle”, but rather that the “Zelle” domain name was registered in honor of a family member. The Respondent states that the fact the synagogue has a different name is irrelevant. The Respondent maintains he is entitled to register and use domain names including “Zelle” in the same manner as do many other third parties, and insists there is no deadline or law dictating when he must use the disputed domain names. The Respondent concludes that the Complainant has not proven its case. 6. Preliminary Procedural Issues A. Parties’ Supplemental Submissions No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent without leave from the panel. Paragraph 12 of the Rules provides that a panel may request, in its sole discretion, further statements or documents from either of the parties. However, the Rules and relevant UDRP panel decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances. See, e.g., Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield,WIPO Case No. D2008-0754. Unsolicited supplemental filings are generally discouraged unless specifically requested by the panel. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.6 and 4.7 (and relevant decisions cited therein). UDRP panels have accepted unsolicited supplemental submissions in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission (see Top Driver, Inc., v. Benefits,WIPO Case No. D2002-0972); to bring new and highly relevant legal authority not previously available to the attention of the panel (see Pet Warehouse v. Pets.Com, Inc.,WIPO Case No. D2000-0105); or to rebut arguments of the opposing party that could not reasonably have been anticipated (see Randan Corp. v. Rapazzini Winery,WIPO Case No. D2003-0353). Neither the Complainant nor the Respondent sought leave of the Panel prior to submitting their respective supplemental filings. The Panel nonetheless will consider the Parties’ supplemental submissions to the extent relevant to the decision in this case. 7. 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 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 names The Complainant’s ZELLE and ZELLEPAY marks are clearly recognizable in the disputed domain names.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 Top Level Domains (“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 in any manner. The Respondent notwithstanding has registered multiple disputed domain names, each of which is identical or confusingly similar to the Complainant’s ZELLE marks, and which the Respondent has used in order generate PPC advertising revenues. 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 ZELLE marks in mind when registering the disputed domain names, each of which incorporates the Complainant’s ZELLE mark in its entirety. The record reflects that the Respondent registered the disputed domain names seeking to profit from the Complainant’s ZELLE marks by generating PPC advertising revenues. UDRP panels consistently have found that the use of a domain name to host a parked page comprising PPC links does not constitute a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9. See,e.g., Limit, LLC and Newman’s Own, Inc. v. Lisa Katz, Domain Protection LLC,WIPO Case No. D2020-0685; Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364. Having regard to all of the foregoing, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names. There is no evidence that the Respondent has been commonly known by the disputed domain names 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 names. 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 names within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel considers that the Respondent more likely than not was aware of the Complainant and had the Complainant’s ZELLE mark in mind when registering the disputed domain names. The Complainant’s ZELLE mark is distinctive, and the Panel observes that paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. See WIPO Overview 3.0, sections 3.2.2, and 3.2.3. The Panel holds that the Respondent registered and has used the disputed domain names in bad faith, seeking to trade on the reputation and goodwill of the Complainant’s ZELLE marks in order to exploit and profit from the generation of PPC advertising revenues. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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 William R. Towns 1 See WIPO 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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