The Complainant is Zions Bancorporation of Salt Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America.
The Respondent is Mohammed Akik Miah of London, United Kingdom of Great Britain and Northern Ireland, self-represented.
The disputed domain names <zionsbank.careers>, <zionsbank.directory>, <zionsbank.equipment>, <zionsbank.estate>, <zionsbank.technology>, <zionsbank.today>, <zionsbank.ventures>, <zions.equipment>, <zions.holdings> and <zions.today> are registered with 1&1 Internet AG (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2014. On May 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 19, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details. The Complainant filed an amendment to the Complaint on May 21, 2014, in response to an invitation from the Center to amend.
The Center verified that the Complaint with the amendment 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2014. On June 10, 2014, the Respondent requested an extension to file a response. Upon consideration of the stated reasons and the Complainant's objections, the Center granted a five-day extension. The Respondent submitted an informal email to the Center on June 18, 2014.
The Center appointed Andrew F. Christie as the sole panelist in this matter on June 25, 2014. 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.
The Complainant, a bank holding company, is the owner of the following trademarks registered with the United States Patent and Trademark Office in class 36 in respect of a wide range of financial services: ZIONS BANK, registered August 29, 2000; ZIONSBANK.COM, registered January 22, 2002; and ZIONS, registered August 29, 2000. Since July 5, 1995, the Complainant has been the registrant of the domain name <zionsbank.com>, from which resolves the website at which the Complainant advertises and offers its banking services.
The disputed domain names were registered between February 5, 2014, and March 5, 2014. Screenshots provided by the Complainant show that, at some unspecified time prior to filing of the Complaint, three of the disputed domain names – <zionsbank.careers>, <zionsbank.directory> and <zionsbank.estate> – resolved to websites that contain links to various banking-related websites. At that time, the other domain names appeared to be inactive. Currently, it appears that all domain names are inactive.
The Complainant contends that each of the disputed domain names contains a name that is identical to one of the Complainant's registered trademarks – ZIONS BANK, ZIONSBANK.COM or ZIONS – and is otherwise confusingly similar to these registered marks. In addition, each disputed domain name includes a new generic Top-Level Domain ("gTLD"); however none of the gTLDs distinguishes any of the disputed domain names from any of the Complainant's registered trademarks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names because: (i) the Complainant has been using its registered trademarks in commerce since at least as early as 1891 (for ZIONS), 1992 (for ZIONS BANK) and 1995 (for ZIONSBANK.COM), whereas it believes the Respondent acquired the registration for the disputed domain names after its trademark registrations; (ii) the Respondent is not a licensee of the Complainant's trademarks, and has not otherwise obtained authorization to use those trademarks; (iii) the Respondent is not using any of the disputed domain names as part of a bona fide offering of goods or services, but instead appears to be using them to resolve to websites that provide links to banking-related websites of third parties, or they are inactive; (iv) the active websites to which the disputed domain names resolve are misleading and may divert consumers to those websites instead of the Complainant's official and authorized website, and the Respondent may use them in connection with various phishing and fraudulent activities; and (v) the Respondent's use of the Complainant's trademarks may tarnish them.
The Complainant contends that the disputed domain names were registered and are being used in bad faith because: (i) they lead to websites that provide direct or indirect links to various banking-related and other websites which identify services that are identical or similar to the type of services offered by the Complainant under its registered trademarks, or they are inactive; (ii) a pattern of registering domain names similar to a trademark may constitute bad faith, and the Complainant has already filed and prevailed on an action for another domain name registered to the Respondent, <zionsbank.holdings>, using one of the Complainant's identical trademarks; (iii) the use of identical or similar marks in the disputed domain names indicates that they were registered primarily for the purpose of disrupting the business of the Complainant; (iv) on the active websites to which the disputed domain names resolve the Respondent has displayed the mark ZIONS; (v) the Respondent is clearly trying to divert customers of the Complainant from the Complainant's website to the Respondent's websites by using the dominant portion of the Complainant's trademarks in the disputed domain names and on the Respondent's websites; and (vi) by using the dominant portion of the Complainant's marks in the disputed domain names and on the associated websites, the Respondent is intentionally creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites.
The Respondent transmitted by email to the Center an informal communication, the substance of which contained the following statements: (i) the Respondent will add a line to the websites stating there is no association or relationship with the Complainant; (ii) the Respondent will not use the websites for commercial uses; (ii) the Respondent's intention is to use the websites "as hub, where information from credited press (example new york time, financial time and Bloomberg) about what the bank is up and make it to a social hub"; and (iv) the Respondent is not cybersquatting and has no intention to sell the disputed domain names to the Complainant for a profit.
Each of the disputed domain names incorporates the whole of the Complainant's registered trademark ZIONS, and all but three of the disputed domain names incorporate the whole of the Complainant's registered trademark ZIONS BANK, in the second level of the domain name. None of the various gTLDs of the disputed domain names – namely ".careers", ".directory", ".equipment", ".estate", ".holdings", ".technology", ".today" or ".ventures" – operates to lessen the inevitable confusion of the disputed domain names with the Complainant's trademarks that results from the incorporation of the whole of the Complainant's trademarks at the second level. Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ZIONS or ZIONS BANK registered trademarks. The Respondent has not provided any evidence that it has been commonly known by the disputed domain names, that it has made or has prepared to make a bona fide use of the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names. The evidence provided by the Complainant shows that some of the disputed domain names were used to resolve to websites providing links to banking-related websites of third parties, while the others were inactive. According to the present record, therefore, the disputed domain names are not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The Respondent's assertion as to its intended future use of the disputed domain names is fanciful. For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The disputed domain names were registered many years after the Complainant first registered and first used its ZIONS and ZIONS BANK trademarks. The evidence on the record provided by the Complainant with respect to the use of its ZIONS and ZIONS BANK trademarks, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain names were registered, the Respondent most likely knew of the Complainant's trademarks and knew that it had no rights or legitimate interests in the disputed domain names. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent's use of three of the disputed domain names indicates that the Respondent has used some of the disputed domain names to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant's trademarks as to the affiliation of that website. In addition, the Complainant has previously prevailed against the Respondent in an action under the Policy in relation to the domain name <zionsbank.holdings> (Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269), which is a circumstance that supports the conclusion that the Respondent has engaged in a pattern of conduct of registering domains name in order to prevent the Complainant from reflecting its trademarks in corresponding domain names. For all these reasons, the Panel is satisfied that the disputed domain names have been registered and are being used in bad faith.
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, <zionsbank.careers>, <zionsbank.directory>, <zionsbank.equipment>, <zionsbank.estate>, <zionsbank.technology>, <zionsbank.today>, <zionsbank.ventures>, <zions.equipment>, <zions.holdings> and <zions.today>, be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Date: July 9, 2014