The Complainant is ZB, N.A., a national banking association, dba Zions First National Bank of Salt Lake City, Utah, United States of America (“United States"), represented by TechLaw Ventures, PLLC, United States.
The Respondent is Domain Admin, C/O ID#10760, Privacy Protection Service Inc d/b/a PrivacyP of Nobby Beach, Queensland, Australia and Huaijin Hu of Yue Yang, Hunan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2017. On May 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 2017 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on May 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2017.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on June 21, 2017. 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
The Complainant’s trademark ZIONS BANK has been registered in the United States under No. 2,381,006 on August 29, 2000. The Complainant’s trademark ZIONS has been registered in the United States under No. 2,380,325 on August 29, 2000. The trademark ZIONS has been used in the United States since May 13, 1891. The Complainant’s parent company has been the registrant of the domain name since July 5, 1995 and does business under the name Zions First National Bank.
The disputed domain name was registered on July 10, 2016, and does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical with the Complainant’s trademark ZIONS BANK and confusingly similar with the Complainant’s trademark ZIONS, which are used in the field of various financial services. The country code top-level domain (“ccTLD”) .pw must be disregarded when assessing the similarity of the Complainant’s trademarks with the disputed domain name.
The Complainant has been using the trademark ZIONS since 1891. The Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s trademark or the disputed domain name. The disputed domain name is not used for legitimate non-commercial or fair use purposes and the Respondent is not generally known by the disputed domain name.
The use of the Complainant’s trademarks in a virtually identical domain name indicates that the disputed domain name was primarily registered for disrupting the Complainant’s business. By creating likelihood of confusion with the Complainant’s trademarks the Respondent is trying to exploit the goodwill of the Complainant and its trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name consists entirely of the Complainant’s trademark ZIONS BANK. With the exception of the top-level domain ccTLD .pw, which is to be disregarded when assessing the similarity of the trademark and the domain name, the disputed domain name is identical with the Complainant’s trademark.
Accordingly, the Panel finds that the disputed domain name is identical with the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain names.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to use the Complainant’s trademark in a domain name or otherwise.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that each disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent 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 respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent 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 respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
The disputed domain name is not in use and it is not clear from the case file whether it has been used at any previous time. The disputed domain name points to a website indicating that “services for this domain have been disabled”.
However, considering that the Complainant’s marks have been used since 1891, and that the Complainant operates a website at “www.”, the Panel finds it unlikely that the Respondent would not have been aware of the Complainant when registering the disputed domain name.
The disputed domain name does not resolve to a website or resolves to a registrar parking site. According to section 3.3 of the WIPO Overview 3.0, the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith and the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.
In this case the Complainant’s trademark has been used for over a hundred years before the disputed domain name was registered, the Respondent has not submitted a response to this Complaint, and the disputed domain name is identical with the Complainant’s trademark ZIONS BANK. On balance, this means that the fact that there is no active use of the disputed domain name does not mean it would not have been registered and used in bad faith.
Hence the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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 the Complainant.
Tuukka Airaksinen
Sole Panelist
Date: July 4, 2017
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