Complainant is Early Warning Services, LLC, United States of America (“United States” or “U.S.”), represented internally.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 25, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 26, 2021. 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 May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 18, 2021. The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on July 2, 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 and affiliated entities and licensees, is one of the world’s leading and fastest-growing digital payment networks. Complainant’s electronic payment services enable the transfer of money between bank accounts. Some of the world’s largest banks offer Complainant’s services to their customers including some of the largest consumer banking institutions in the United States. Complainant holds numerous trade mark registrations for the ZELLE and ZELLEPAY marks and variations thereof in the United States and around the world (collectively, “Complainant’s Marks”), including: Mark Jurisdiction Registration No. Registration Date ZELLE U.S. 5,277,307 August 29, 2017 ZELLE (stylized) U.S. 5,312,400 October 17, 2017 ZELLE U.S. 5,449,233 April 17, 2018 ZELLE U.S. 5,449,234 April 17, 2018 ZELLEPAY U.S. 5,938,276 December 17, 2019 ZELLE NETWORK U.S. 5,302,986 October 3, 2017 ZELLE / THIS IS HOW MONEY MOVES U.S. 5,298,235 September 26, 2017 ZELLE THIS IS HOW MONEY MOVES (stylized) U.S. 5,303,203 October 3, 2017 ZELLE THIS IS HOW MONEY MOVES U.S. 5,703,729 March 19, 2019 ZELLE. THIS IS HOW MONEY MOVES U.S. 5,703,730 March 19, 2019 Complainant maintains an active presence on the Internet, including through its official website located at the domain name Complainant also owns and uses other domain names that include the word “Zelle”. According to the publicly available WhoIs the Domain Name was registered on February 19, 2021. 5. Parties’ Contentions A. Complainant Complainant contends that the Domain Name is confusingly similar to Complainant’s Marks as it contains Complainant’s Marks in their entirety, with the addition of the descriptive word “regester” (which is a common misspelling of the descriptive term “register”). The addition of this descriptive word does not reduce the likelihood of confusion but rather enhances consumer confusion because it is descriptive of Complainant’s app-based payment transfer services. Complainant asserts that the Domain Name is being used to divert Internet traffic from Complainant’s website. The Domain Name resolves to a different landing page depending on which web browser is used. If the web browser used is Microsoft Edge, the Domain Name resolves to a landing page which contains a message indicating the visitor’s computer has been “infected with a Trojan Spyware” and another message indicating a “Trojan Spyware Alert” which also prompts the visitor to contact “windows support +1-888-[…]”. Complainant has reason to believe these messages are a phishing attempt. If the web browser used is Google Chrome, the Domain Name resolves to a landing page which contains a message prompting the visitor to click a link which will causes the visitor to be “redirected to the Chrome store” where the visitor “will be given the option to install Secured search extension”. This, Complainant maintains, is well-known browser malware software for hijacking. If the web browser used is Mozilla Firefox, the Domain Name resolves to a landing page which contains a message prompting the visitor to click a link which “will start the downloading process of [a] Firefox add-on”. Though the Secured Searchmalware is not mentioned in the message, Complainant maintains that due to the similarities between the message on the landing page for when the Google Chrome web browser is used and the message on the landing page for when the Mozilla Firefox web browser is used, Complainant has reason to believe the “Firefox add-on” is likely the Secured Search malware. Complainant submits that Respondent has no legitimate right or interest in the Domain Name because Respondent is not associated with Complainant and has never been authorised or licensed to use Complainant’s Marks. Nor is Respondent making any legitimate noncommercial use of the Domain Name, but is rather trading on the reputation and goodwill of Complainant’s Marks for financial gain. Finally, Complainant alleges that Respondent has registered and is using the Domain Name in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant asserts that Complainant and its associates is one of the world’s leading and fastest-growing digital payment networks and that some of the world’s largest banks use its electronic payment services. Complainant has also registered Complainant’s Marks in at least the United States. The registration of Complainant’s Marks predates the date of registration of the Domain Name. Complainant contends that the Domain Name is confusingly similar to Complainant’s Marks as it contains Complainant’s Marks in their entirety, with the addition of the word “regester”. Regester is very similar to and has the appearance of being a misspelt version of the term “register”. The Panel finds that the addition of the word “regester” (albeit a misspelling of the common English word “register” but only by virtue of one letter) fails to prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. On that basis, the Panel concludes that the Domain Name is confusingly similar to Complainant’s Marks. Accordingly, the first ground under the Policy is made out. B. Rights or Legitimate Interests Complainant contends that Respondent is using the Domain Name for improper purposes. In particular, Complainant alleges that the Domain Name is being used to divert Internet traffic from Complainant’s website. First, in relation to web browsers using Microsoft Edge suggesting that their computer has been infected with a virus. This, Complainant asserts is a phishing attempt. Secondly, in relation to web browsers using Google Chrome, by attempting to direct users to well-known browser malware software for hijacking. Third, in relation to web browser using Mozilla Firefox, resolving to a landing page which contains a message prompting the visitor to click a link which “will start the downloading process of [a] Firefox add-on”, which Complainant has reason to believe is likely malware. Given the nature of these allegations and the failure to deny them, the Panel finds that the Domain Name was not registered and has not been used for any legitimate or fair purpose. Accordingly, the second ground under the Policy is made out. C. Registered and Used in Bad Faith Given the above finding the Panel has no difficulty finding that the Domain Name is designed to trade on the reputation and goodwill of Complainant and Complainant’s Marks and to do so for financial gain and/or for phishing or the distribution of malware. It is well-established that where a respondent is found to be using a confusingly similar domain name to divert users to its website, or the website of others, to generate traffic and sales commissions for its own commercial benefit, such conduct is typically recognized as constituting bad faith under the Policy. Moreover, panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include phishing or malware distribution. See section 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has therefore clearly established that the Domain Name was registered and has been used in bad faith. Accordingly, the third ground under the Policy is satisfied. 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, Clive L. Elliott Q.C.
Sole Panelist
Date: July 21, 2021
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