ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Zions Bancorporation, N.A., a national banking association, dba Zions First National Bank v. Privacy Service Provided by Withheld for Privacy ehf/ Curt Green Case No. D2022-1397 1. The Parties Complainant is Zions Bancorporation, N.A., a national banking association, dba Zions First National Bank, United States of America ("United States"), represented by TechLaw Ventures, PLLC, United States. Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland/ Curt Green, United States. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 19, 2022. On April 20, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2022, 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 Complainant on April 21, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 21, 2022. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on May 3, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2022. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent's default on May 30, 2022. page 2 The Center appointed Ingrīda Kariņa-Bērziņa, as the sole panelist in this matter on June 7, 2022. 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 is a financial services institution operating in the region around the State of Utah in the United States. It is the proprietor of the following trademark registrations: - United States Trademark No. 2381006 for ZIONS BANK (word mark), registered on August 29, 2000 for services in Class 36, claiming a date of first use of July 12, 1992; - United States Trademark No. 2531436 for ZIONSBANK.COM (word mark), registered on January 22, 2002 for services in Class 36, claiming a date of first use of July 5, 1995; - United States Trademark No. 2380325 for ZIONS (word mark), registered on August 29, 2000 for services in Class 36, claiming a date of first use of May 13, 1891. Complainant registered the domain name in 1995, and uses this domain name for its primary business website. The disputed domain name was registered on April 7, 2022. It does not resolve to an active website. 5. Parties' Contentions A. Complainant Complainant's contentions may be summarized as follows: Under the first element, Complainant states that it has done business under the name Zions First National Bank since 1890. Complainant's ZIONS and ZIONS BANK marks are recognizable within the disputed domain name. The only difference between Complainant's marks and the disputed domain name is the new generic top-level domain ("gTLD") ".digital." However, this gTLD should be disregarded as a standard registration requirement, regardless of its content. Under the second element, Complainant states that it has been using its ZIONS mark since at least 1891. Complainant is not aware that Respondent is using, or making demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use thereof. Respondent has not obtained authorization to use Complainant's marks. Under the third element, Complainant states that the disputed domain name is identical to Complainant's well-known ZIONS mark. Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant. Complainant has used the ZIONS mark since at least 1891 and advertises the mark heavily in the region around the State of Utah in the United States, where the ZIONS mark is widely known. Respondent concealed its identity by using a privacy service. Complainant states that it has prevailed in numerous similar UDRP complaints against parties registering domain names reflecting its ZIONS mark. Complainant requests transfer of the disputed domain name. page 3 B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. Under paragraph 15(a) of the Rules, "[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the ZIONS and ZIONS BANK marks through registrations in the United States. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2. The disputed domain name reflects Complainant's ZIONS mark in its entirety and differs from its ZIONS BANK mark only by the addition of a hyphen. In comparing Complainant's marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant's marks as they are clearly recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.7. It is the well-established view of UDRP panels that a gTLD such as ".digital", is viewed as a standard registration requirement and as such may be disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). B. Rights or Legitimate Interests The circumstances stated in the Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and has no rights in the ZIONS or ZIONS BANK marks. The disputed domain name reflects Complainant's well-established marks, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1. Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent has not proved rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain name, nor that there are any circumstances or activities that would page 4 establish Respondent's rights therein. The disputed domain name does not resolve to an active website. There is no evidence that the disputed domain name has been registered or is being used for legitimate noncommercial purposes. See WIPO Overview 3.0, section 2.1, and cases cited thereunder. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Pursuant to Paragraph 4(b) of the Policy, the Panel finds that Complainant has demonstrated Respondent's bad faith registration and use of the disputed domain name. Complainant's rights in its ZIONS mark predate the registration of the disputed domain name by more than a century. The disputed domain name reflects Complainant's ZIONS mark together with the word "bank," separated by a hyphen. The disputed domain name is therefore nearly identical to Complainant's ZIONS BANK mark. The Panel finds that, by registering such a domain name, Respondent has attempted to create an association with Complainant's distinctive and well-established marks. The Panel further finds that Respondent has, on balance, demonstrated bad faith by passive holding of the disputed domain name. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also WIPO Overview 3.0, section 3.3. In particular, the disputed domain name reflects Complainant's registered ZIONS and ZIONS BANK marks. Respondent has concealed its identity and failed to provide any evidence of a connection to a legitimate business related to Complainant's marks. Respondent has failed to provide any evidence of actual or contemplated good-faith use of the disputed domain name. Under the circumstances, the Panel does not find any such use plausible. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 be transferred to Complainant. /Ingrīda Kariņa-Bērziņa/ Ingrīda Kariņa-Bērziņa Sole Panelist Date: June 21, 2022
Full & Egal Universal Law Academy