ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Zions Bancorporation, N.A. v. Gary Wilson, Glcp company Case No. D2023-1044 1. The Parties Complainant is Zions Bancorporation, N.A., United States of America ("U.S."), represented by TechLaw Ventures, PLLC, U.S. Respondent is Gary Wilson, Glcp company, U.S. 2. The Domain Name and Registrar The disputed domain names and (collectively the "Disputed Domain Names") are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2023. On March 9, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 10, 2023, 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 (Privacy Protect, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant also on March 10, 2023, 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 March 14, 2023. 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 Complaint, and the proceedings commenced on March 15, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 5, 2023. page 2 The Center appointed Colin T. O'Brien as the sole panelist in this matter on April 18, 2023. 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 the owner of the following trademarks registered with the United States Patent and Trademark Office: ZIONS BANK, registration no. 2,381,006, registered on August 29, 2000, for "financial services, namely banking, mortgage lending and banking, trusteeship representatives, investment management services, escrow services, namely holding stock certificates until paid, estate and probate trust management, federal and municipal bond underwriting services and federal and municipal bond brokerage services, financial analysis and consultation, and bond private placements, namely finding and arranging for purchasers to buy bonds and advising municipalities on bond structuring"; ZIONSBANK.COM, registration No. 2,531,436, registered on January 22, 2002, for "financial services namely banking"; and ZIONS, registration no. 2,380,325, registered on August 29, 2000, for " financial services, namely banking, securities brokering, mortgage lending and banking, trusteeship representatives, investment management services, escrow services, namely holding stock certificates until paid, estate and probate trust management, insurance agencies and brokerage in the fields of property, casualty, life, health and disability insurance and bonding services, federal and municipal bond underwriting services and federal and municipal bond brokerage services, bond private placements, namely finding and arranging for purchasers to buy bonds, lease-purchase financing, and financial analysis and consultation". Complainant registered the domain name on July 5, 1995. The domain names and were both registered on February 11, 2023. The record shows that the Domain Names have been resolving to websites that include the following text: "Welcome to nginx! If you see this page, the nginx web server is successfully installed and working. Further configuration is required". 5. Parties' Contentions A. Complainant Complainant does business under the name Zions First National Bank, and has been doing business under that name since June 12, 1890. A side-by-side comparison of the Domain Names and Complainant's registered marks ZIONS, ZIONS BANK, and ZIONSBANK.COM shows that the identical or virtually identical marks are included and recognizable in the Disputed Domain Names. The only difference between Complainant's registered trademarks and the Domain Names is the new generic Top-Level Domains ".biz" and ".pro". By including Complainant's registered mark and the dominant part of other of Complainant's registered marks in the Disputed Domain Names and by copying Complainant's website on one of the resulting sites, Respondent is intentionally creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites for commercial gain. Complainant has been using its ZIONS mark in commerce since at least as early as 1891, and obtained federal registration for such mark on August 29, 2000. Complainant has been using its ZIONS BANK mark page 3 in commerce since at least as early as 1992, and obtained federal registration for such mark on August 29, 2000. Complainant has been using its ZIONSBANK.COM mark in commerce since at least as early as 1995, and obtained federal registration for such mark on January 22, 2002. Based exclusively on the WhoIs database information, Respondent acquired the registration for the Disputed Domain Names no earlier than February 11, 2023. Complainant has not been aware of any evidence of Respondent's use of, or demonstrable preparations to use, the Disputed Domain Names, or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Respondent has used Complainant's identical marks to create the Disputed Domain Names. Complainant is not aware that Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Names, even if Respondent has acquired no trademark or service mark rights. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names; rather, Respondent's use of the Disputed Domain Names appears to be with the intent for commercial gain by misleadingly diverting consumers to Respondent's websites associated with the Disputed Domain Names. Such use of the Disputed Domain Names may tarnish Complainant's registered trademarks. Respondent is not a licensee of Complainant's trademarks, and has not otherwise obtained authorization to use Complainant's marks. The use of virtually identical or similar marks in the Domain Names indicates that the Disputed Domain Names were registered primarily for the purpose of disrupting the business of Complainant, and appears to be intended to take advantage of the goodwill associated with Complainant's federally registered trademarks. Respondent is clearly trying to exploit the goodwill of Complainant and its trademarks by diverting customers of Complainant from Complainant's website to Respondent's websites for commercial gain or malicious purposes by copying Complainant's website and by creating a likelihood of confusion with Complainant's trademarks. The Disputed Domain Names resolve to Respondent-owned websites that are landing pages containing information regarding a third-party web server. Complainant's registered marks were well-known and in wide use at the time the Disputed Domain Names were registered. By using Complainant's registered marks ZIONS, ZIONS BANK, and ZIONSBANK.COM as or as part of the Domain Names, Respondent clearly knew about Complainant's registered marks at the time it registered the Disputed Domain Names. Respondent's websites are accessed using the Domain Names which include Complainant's registered trademarks, the use of the Disputed Domain Names is misleading, and Respondent may also use them in connection with various phishing and fraudulent activities. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has demonstrated it owns long-standing registered and common law trademark rights in the ZIONS and ZIONS BANK marks, and has shown that no other entity has rights in or uses Complainant's page 4 Marks. The Top-Level Domains ("TLD") ".biz" and ".pro" are viewed as a standard registration requirements and as such are disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11. Accordingly, the relevant portion of the Disputed Domain Names reflects the ZIONS BANK mark with separating hyphens that may be disregarded. Accordingly, the Disputed Domain Name are confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and has not been commonly known by the Disputed Domain Names. The fact that Respondent obtained the Disputed Domain Names decades after Complainant had begun using its well-known ZIONS and ZIONS BANK marks indicates that Respondent sought to piggyback on the marks for illegitimate reasons. After a complainant has made a prima facie case, the burden of production shifts to a respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Names. Moreover, the Disputed Domain Names incorporate Complainant's trademarks in its entirety potentially conveying to unsuspecting Internet users the false belief that any website connected to the Disputed Domain Names would be associated with Complainant. Such a risk of implied affiliation cannot constitute fair use. WIPO Overview 3.0, section 2.5.1. In the absence of any evidence rebutting Complainant's prima facie case indicating Respondent's lack of rights or legitimate interests in respect of the Disputed Domain Names, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Disputed Domain Names were registered years after Complainant first registered and used its ZIONS and ZIONS BANK marks. The evidence provided by Complainant with respect to the extent of use and fame of its ZIONS and ZIONS BANK marks combined with the absence of any evidence provided by Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Names were registered, Respondent undoubtedly knew of the Complainant's widely-known ZIONS and ZIONS BANK marks, and knew it had no rights or legitimate interests in the Disputed Domain Names. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. The disputed domain names resolve to parked pages hosted by the "nginx web server". The Panel finds that the only plausible basis for registering and using the Disputed Domain Names as detailed was for illegitimate and bad faith purposes. In view of section 3.3 of the WIPO Overview 3.0, given the above considerations and Respondent's details having been masked (either with GDPR or privacy service), the totality of the circumstances support a finding of bad faith, regardless of the current inactive state of the Disputed Domain Names. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. page 5 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 names, and , be transferred to the Complainant. /Colin T. O'Brien/ Colin T. O'Brien Sole Panelist Date: May 2, 2023
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