The Complainant is Early Warning Services, LLC, United States of America (“United States” or “US”), internally represented.
The Respondent is Protection Domain, Panama.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2021. On August 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2021, 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 September 7, 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 the Respondent of the Complaint, and the proceedings commenced on September 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2021.
The Center appointed Knud Wallberg as the sole panelist in this matter on November 17, 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 BackgroundThe Complainant is a company with its principal place of business in the United States, and a provider of digital payment services under the trademark ZELLE.
The Complainant is the owner of registrations for the trademark in several jurisdictions worldwide, including US Registration No. 5,277,307 for ZELLE, filed on March 9, 2016, and registered on August 29, 2017, for “financial transaction services, namely, providing secure payment and money transfer options and permitting account holders to make payment requests” in class 36; and US Registration No. 5,938,276 for ZELLEPAY, filed on March 9, 2016, and registered on December 17, 2019, also for “financial transaction services, namely, providing secure payment and money transfer options and permitting account holders to make payment requests” in class 36.
The Complainant is also the owner of numerous domain names comprising the ZELLE trademark, including
The disputed domain names were each registered on May 7, 2018. At the time of filing of the Complaint the disputed domain name
According to the Complainant this is a textbook case of cybersquatting. The Respondent is engaged in the unauthorized use of the Complainant’s registered trademarks, as the disputed domain names completely incorporate the Complainant’s ZELLE and ZELLEPAY trademarks, and also is engaged in the illegal diversion of Internet customers from Complainant’s primary website. Furthermore, the Respondent has not been authorized by the Complainant to use the disputed domain names just as the Respondent is not known under the disputed domain names. The Respondent therefore has no legitimate rights or interests in the disputed domain names. Finally, the Complainant asserts that the Respondent registered and continues to use the disputed domain names in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain names are confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark ZELLEPAY since they contain obvious misspellings of this mark. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The generic Top-level Domain (“gTLD”) “.com” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are fulfilled in relation to all the disputed domain names.
B. Rights or Legitimate InterestsIt is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has not rebutted the Complainant’s prima facie case, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain names on the part of the Respondent in these proceedings. Furthermore, previous UDRP panels have categorically held that the use of a disputed domain name for illegal activity e.g. malware distribution, or phishing, can never confer rights or legitimate interest on a respondent. See section 2.13 of the WIPO Overview 3.0.
The Panel therefore finds that the conditions in paragraph 4(a)(ii) of the Policy are fulfilled in relation to all the disputed domain names.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the circumstances of the case, in particular the extent of use and reputation of the Complainant’s trademarks ZELLE and ZELLEPAY, it is inconceivable to the Panel that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s marks.
The Panel therefore finds that the disputed domain names were registered in bad faith.
Furthermore, the Panel finds that by deliberately creating a likelihood of confusion with the Complainant’s marks the Respondent use of the disputed domain names is clearly able to disrupt the business of the Complainant, and intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites (see WIPO Overview 3.0, section 3.1.4).
The Panel therefore finds that the conditions in paragraph 4(a)(iii) of the Policy are fulfilled in relation to all the disputed domain names.
7. DecisionFor 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,
Knud Wallberg
Sole Panelist
Date: December 9, 2021