Complainant is Early Warning Services, LLC, United States of America (“United States” or “U.S”), represented by Bryan Cave Leighton Paisner, United States.
Respondent is Caren Shaw, Sharon Shaw, United States. 2. The Domain Name(s) and Registrar(s)
The disputed domain names, The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2021. On January 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with seven domain names including the Domain Name The Center verified that the Complaint together with the amended Complaints 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 February 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2021. Respondent did not submit any formal response. Respondent sent informal communications on January 27, 2021, February 2, 2021, February 23, 2021, and March 9, 2021 to which the Center acknowledged receipt. The Center notified the Commencement of Panel Appointment Process to the Parties on March 9, 2021. The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 11, 2021. 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 (and its related entities and licensees) is one of the world’s leading digital payment networks. Complainant’s “Zelle” electronic payment services enable individuals and companies to transfer money between bank accounts quickly and safely. Complainant’s Zelle services target a wide consumer base. More than 800 financial institutions currently use these services. Some of the world’s largest banks offer the Zelle services to their customers, including nearly all the largest consumer banking institutions in the United States, such as Bank of America, U.S. Bank, Citi, Ally Bank, HSBC and Wells Fargo. In 2019, the Zelle services processed 743 million transactions totaling USD 187 billion in payments. Complainant holds numerous trademark registrations for the ZELLE mark and variations thereof in the United States and around the world. By way of example, Complainant owns the following United States trademark registrations: 1. ZELLE (U.S. Trademark Registration No. 5,277,307), filed on March 9, 2016 and registered on August 29, 2017, for “financial transaction services, namely, providing secure payment and money options and permitting account holders to make payment requests,” in International Class 36; 2. ZELLE (Stylized) (U.S. Trademark Registration No. 5,312,400), filed on April 5, 2016 and registered on October 17, 2017, for “financial transaction services, namely, providing secure payment and money transfer options and permitting account holders to make payment requests,” in International Class 36; 3. ZELLE (U.S. Trademark Registration No. 5,449,233), filed on August 9, 2016 and registered on April 17, 2018, for “communication and telecommunication services, namely, delivery of messages by electronic transmission, over local or global communication networks,” in International Class 38; 4. ZELLE (U.S. Trademark Registration No. 5,449,234), filed on August 9, 2016 and registered on April 17, 2018, for “computer software for making payment request and for providing payment notifications and messages” in International Class 9; 5. ZELLE NETWORK (U.S. Trademark Registration No. 5,302,986), filed on August 15, 2016 and registered on October 3, 2017, for “financial transaction services, namely, providing secure payment and money transfer options and permitting account holders to make payment requests,” in International Class 36; 6. ZELLE | THIS IS HOW MONEY MOVES (U.S. Trademark Registration No. 5,298,235), filed on December 14, 2016 and registered on September 26, 2017, for “financial transaction services, namely, providing secure payment and money transfer options” and “payment processing services,” in International Class 36; 7. ZELLE THIS IS HOW MONEY MOVES (Stylized) (U.S. Trademark Registration No. 5,303,203), filed on October 6, 2016 and registered on October 3, 2017, for “financial transaction services, namely, providing secure payment and money transfer options” and “payment processing services,” in International Class 36; 8. ZELLE. THIS IS HOW MONEY MOVES. (U.S. Trademark Registration No. 5,488,183), filed on August 9, 2017 and registered on June 5, 2018, for “financial transaction services, namely, providing secure payment and money transfer options and permitting account holders to make payment requests,” in International Class 36; 9. ZELLE THIS IS HOW MONEY MOVES (U.S. Trademark Registration No. 5,703,729), filed on October 6, 2016 and registered on March 19, 2019, for “computer software for making payment requests and for providing payment notifications and messages,” in International Class 9; 10. ZELLE. THIS IS HOW MONEY MOVES. (U.S. Trademark Registration No. 5,703,730), filed on October 6, 2016 and registered on March 19, 2019, for “communication and telecommunication services, namely, delivery of messages by electronic transmission, over local or global communications networks, including the internet, intranets, extranets, mobile communication, cellular and satellite networks,” in International Class 36; and 11. ZELLEPAY (U.S. Trademark Registration No. 5,938,276), filed on March 9, 2016 and registered on December 17, 2019, for “financial transaction services, namely, providing secure payment and money transfer options and permitting account holders to make payment requests” in International Class 36. Complainant has submitted a list of additional ZELLE (and variation) trademark registrations and applications around the world. Complainant maintains an active presence on the Internet, including through its website at Complainant owns numerous additional domain names incorporating its ZELLE marks, including the following: Complainant and associated entities who are licensees of the ZELLE marks (including banks such as Bank of America, U.S. Bank, Citi, Ally Bank, HSBC and Wells Fargo) have expended a substantial amount of resources, money, time and effort promoting, marketing, advertising, and building consumer recognition and goodwill in Complainant’s ZELLE brand goods and services. Complainant has successfully brought a number of cases under the UDRP, including Early Warning Services, LLC v. Vinay Shan,WIPO Case No. D2020-0809 (transferring The Domain Names Complainant contends that this is a textbook case of cybersquatting. Complainant states that Respondent is engaged in the unauthorized use of Complainant’s registered trademarks, as each of the Domain Names completely incorporates Complainant’s ZELLE trademarks or a typo-variation thereof, and are, therefore, confusingly similar to Complainant’s marks; Respondent lacks any legitimate rights in the ZELLE marks; and Respondent registered and continues to use the Domain Names in bad faith, as Respondent is engaged in the illegal diversion of Internet customers from Complainant’s primary website located at the domain name, (i) Identical or Confusingly Similar Complainant states that the Domain Names should be transferred to Complainant because they wholly incorporate Complainant’s ZELLE and/or ZELLEPAY trademarks. In addition to incorporating these marks, one of the Domain Names merely adds the descriptive term “transfer” to Complainant’s ZELLEPAY mark. According to Complainant, the addition of this generic word to Complainant’s famous mark does not reduce the likelihood of confusion. In fact, this additional word enhances consumer confusion because it is descriptive of Complainant’s payment transfer services. Complainant claims it is well-established in UDRP panel decisions that where a domain name takes a mark of a company and then adds words descriptive of goods or services it provides, the result is a domain name that is confusingly similar to the mark concerned. Complainant states the other two Domains Names are identical to Complainant’s ZELLE and ZELLEPAY marks, except that they add a single letter “i” to the beginning of the marks. Complainant submits that this addition of a single letter does not obviate confusion. The addition of a single, additional letter to an established trademark in a domain name does nothing to avoid a finding of confusing similarity. Moreover, in evaluating whether a domain name is confusingly similar to a trademark, the Top-Level Domain (“TLD”) is disregarded. Complainant claims that Respondent’s use of identical and confusingly similar Domain Names seeks to exploit consumer confusion. Unlike consumers in a traditional retail context, who must travel to a physical location to purchase goods and services, Internet consumers are more likely to be misled into visiting virtual locations by the use of confusingly similar domain names. Respondent seeks to exploit consumer confusion and Complainant’s fame and goodwill by fully incorporating Complainant’s ZELLE and ZELLEPAY marks in the Domain Names. This exploitation is particularly problematic because Complainant operates its core business online. Indeed, several UDRP panels have transferred domain names to Complainant that were confusingly similar to Complainant’s ZELLE and/or ZELLEPAY marks. (ii) Rights or Legitimate Interests Complainant contends that Respondent has no legitimate rights or interests in the Domain Names. Complainant states that Respondent is not in any way associated with Complainant and has never sought or received authorization or a license to use Complainant’s distinctive ZELLE and ZELLEPAY marks in any way. Complainant’s states that its ZELLE and ZELLEPAY marks are well known throughout the United States and in other countries around the world, and its ZELLE services are used by more than 800 financial institutions and by millions of users. Complainant contends that Respondent has no means to establish that he or she has been commonly known as “Zelle,” “Zellepay,” or any variation. Upon information and belief, Respondent has not sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for “Zelle” or any variation. Respondent does not appear to have any legitimate trademark, service mark or other intellectual property rights in the ZELLE or ZELLEPAY marks or any similar marks. The Domain Names wholly incorporate Complainant’s ZELLE and/or ZELLEPAY marks, and two of the Domain Names add the single letter “i,” while another adds the non-distinctive, descriptive term “transfer.” As such, the Domain Names are registered for and used to lure consumers to an imposter’s site for commercial gain. Complainant contends that the above demonstrates Respondent is not making any legitimate noncommercial use of the Domain Names. Respondent’s use of the Domain Names is purely commercial and not legitimate. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks. Complainant claims that Respondent adopted and continues to use the Domain Names, which are confusingly similar to Complainant’s ZELLE and ZELLEPAY marks, for the improper purpose of: (i) illegally trading on Complainant’s goodwill to confuse, mislead, deceive and divert customers; and (ii) intentionally tarnishing and diluting Complainant’s valuable and well-known trademarks. For the foregoing reasons, Complainant submits it has made a prima facie showing that Respondent has no legitimate right or interest to the Domain Names because Respondent is not authorized by Complainant to use the Domain Names; there is no evidence suggesting that Respondent is known under the Domain Names; Complainant’s ZELLE and ZELLEPAY marks are well known; and the Domain Names are being used as bait to lure consumers to Respondent’s website. (iii) Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Domain Names in bad faith, in direct violation of the Policy, paragraphs 4(b)(i), (iii) and (iv). Respondent’s bad faith conduct is evidenced as follows: the Domain Names are designed to trade on the reputation and goodwill of Complainant and its ZELLE and ZELLEPAY marks for financial gain. Respondent uses the Domain Names to divert potential users (a) away from Complainant’s primary website at Moreover, Complainant states that Respondent is passively holding one of the sites as a parked page with links to third party commercial websites. Numerous UDRP decisions have found bad faith under similar circumstances. At least two of the Domain Names state expressly that they are for sale, as each prominently displays a banner at the top stating “[Domain Name] is for sale!” and invites visitors to make a monetary offer to purchase the Domain Name. The third Domain Name resolves to a banner at the top of the web page stating “Interested in zellepaytransfer.com? Our Domain Broker Service may be able to get it for you. Find out how.” The two Domain Names expressly offered for sale appear to be for sale through a third-party domain name sales service, and each website offers no content other than an offer to sell. Complainant contends that this situation indicates that the Domain Names were acquired for the purpose of selling or otherwise transferring them to Complainant or a third party for valuable consideration, no doubt in excess of Respondent’s reasonable registration costs. An offer to sell a domain name registration for an amount in excess of reasonable out-of-pocket costs is evidence of bad faith pursuant to paragraph 4(b)(i) of the Policy. Respondent’s offer to sell the Domain Names to the public, coupled with the full incorporation of Complainant’s famous ZELLE or ZELLEPAY marks, allows for an inference that Respondent is offering to sell the Domain Names to Complainant, its competitors or other third parties and that the sale price would exceed the registration costs, all in violation of the Policy. In addition, upon information and belief, Respondent has absolutely no legitimate trademark, service mark or other intellectual property rights in or to the Domain Names, or any similar marks or names. Respondent’s complete lack of intellectual property rights in the Domain Names further demonstrates bad faith in adopting and using it. Where a domain name is so obviously connected to a particular product or service and the registrant is found to have “no connection” to that product or service, Panels will find a registrant guilty of “opportunistic bad faith.” In sum, Complainant submits that Respondent continues to use Complainant’s ZELLE and ZELLEPAY marks to draw users to its websites, create confusion, and improperly reap commercial profit through diverted sales. Respondent’s use of the ZELLE and ZELLEPAY marks is illegal and improper under the Policy. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Matter – Consolidation argument Complainant has brought a consolidated Complaint against Respondent and requests that consolidation be accepted since it meets the criteria set forth in prior UDRP panel decisions and in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Based on the record, the Panel considers the Domain Names are subject to common control and the consolidation would be fair and equitable to all parties. 6.2. Substantive Matters 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 Names registered by Respondent are 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 Names; and (iii) Respondent has registered and is using the Domain Names in bad faith. A. Identical or Confusingly Similar Complainant has established that it has well-established rights in its registered ZELLE and ZELLEPAY trademarks. The Panel finds that the Domain Names wholly incorporates those marks, while adding the letter “i” for two of the Domain Names, and the word “transfer” for another. The addition of the letter “i” or the word “transfer” (descriptive of Complainant’s payment transfer services) does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0, which states that “where a trademark is recognizable within a domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Accordingly, the Panel finds that the Domain Names are 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 the WIPO Overview 3.0, states, “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 has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its ZELLE and ZELLEPAY trademarks; that Respondent is not commonly known by the Domain Names; that Respondent has not used the Domain Names for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services – instead, the Domain Names have been either offered for sale or used to resolve to a landing webpage with pay per click links. In an email dated February 2, 2021 to the Center, Respondent only stated, “I am willing to sell the domain names to the complaint.” Given the reputation and distinctiveness of Complainant’s marks, Respondent’s use of the Domain Names in this manner does not give rise to any right or legitimate interest in them. Furthermore, the Panel finds that the Domain Names carry a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. 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 Names, which has not been 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 Names in bad faith. WIPO Overview 3.0, section 3.1, states, “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 Names were registered and are being used in bad faith. Based on the evidence, there is little doubt that Respondent, when it registered the Domain Names in 2017, was aware of Complainant and its ZELLE and ZELLEPAY marks, and intentionally targeted those marks, when Respondent registered the Domain Names. Complainant had applied for 10 of the 11 trademarks listed above on various dates in 2016, and the Panel observes as a matter of public record that the Zelle payment service was launched in June 2017. See section 4.8 of the WIPO Overview 3.0. This is the same month when Respondent registered two of the Domain Names, and a month prior to Respondent’s registration of the third Domain Name. The Panel observes that Respondent registered the Domain Names, which fully incorporate Complainant’s distinctive ZELLE and/or ZELLEPAY trademarks in their entirety, along with the letter “i” or the word “transfer.” The Domain Names have no independent dictionary word meaning. Thus, given the distinctiveness of Complainant’s marks, the timing of the registration of the Domain Names after Complainant had applied for its ZELLE and ZELLEPAY trademarks and right after Complainant launched its Zelle payment services, and the fact that the Domain Names are so obviously connected with Complainant’s marks, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its marks when registering the Domain Names. See Accenture Global Services Limited v. ICS INC. / PrivacyProtect.org,WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered). This point is further confirmed by Respondent’s use of the Domain Names, either by listing them for sale or having them linked to pay per click website. In these circumstances, it is clear that the Domain Names have been registered in bad faith and for the purposes of (i) creating a likelihood of confusion with the distinctive ZELLE and/or ZELLEPAY trademarks, and (ii) selling or otherwise transferring them to Complainant or a third party for valuable consideration likely in excess of Respondent’s reasonable registration costs. In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Names were registered and are 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 Names Christopher S. Gibson
Sole Panelist
Date: March 31, 2021
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