The Complainant is ZB, N.A., dba Zions First National Bank of Salt Lake City, Utah, United States of America (“United States”), represented by John Rees Law, PLLC, United States.
The Respondent is Ferdinand Che, Sonday Inc of Buea, Cameroon, self-represented.
The disputed domain name <zionwealth.com> is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 7, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on February 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2017. On February 9, 2017, the Respondent asked for an automatic 4-day extension of the deadline to file the Response. The Response was filed with the Center on March 5, 2017.
The Center appointed Luca Barbero as the sole panelist in this matter on March 9, 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. The decision due date was extended to April 6, 2017.
The Complainant and its predecessors have been doing business under the name “Zions First National Bank” in the field of financial services since June 12, 1890.
The Complainant is the owner of several United States trademark registrations for, or including, ZIONS for services in International class 36, including Registration Nos. 2380325 for ZIONS, registered on August 29, 2000; 2381006 for ZIONS BANK, registered on August 29, 2000; and 2531436 for ZIONSBANK.COM, registered on January 22, 2002.
On July 5, 1995, the Complainant’s parent company Zions Bancorporation registered the domain name <zionsbank.com>, at which the Complainant advertises and offers its banking services.
The disputed domain name <zionwealth.com> was registered on January 5, 2017.
The Complainant contends that the disputed domain name is confusingly similar to the trademark ZIONS since the Complainant’s trademark, although without the final letter “s”, is clearly recognizable within the disputed domain name. The Complainant also alleges that the addition of the common dictionary word “wealth” creates further confusion, because the Complainant is a financial institution and provides also services related to wealth management.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
- The Complainant has been using its registered trademarks in commerce since years before the registration of the disputed domain name. In particular, it has been using the trademark ZIONS in commerce since 1891, ZIONS BANK since 1992, and ZIONSBANK.COM mark since 1995;
- The Complainant is not aware that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name, and that the Respondent has acquired no trademark or service mark rights;
- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name;
- The Respondent is not a licensee of the Complainant’s trademarks, and has not otherwise obtained authorization to use the Complainant’s marks;
- The Respondent is not using the disputed domain name part of a bona fide offering of goods or services, or for a legitimate noncommercial use.
The Complainant also submits that the Respondent registered and has been using the disputed domain name in bad faith because:
- The Respondent knew or should have known about the existence of the Complainant’s trademark, especially since the Complainant’s registered trademarks are well-known and were in wide use at the time the disputed domain name was registered, and the Respondent’s use of virtually identical or similar marks in the disputed domain name indicates that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, and appears to be intended to take advantage of the goodwill associated with the Complainant’s trademark. This would be particularly true inasmuch as the services provided by the Complainant under its registered trademarks include wealth management, and services relating to the wealth of customers;
- The Respondent’s use of the Complainant’s mark may tarnish the Complainant’s trademark;
- The Complainant, or its affiliates, have prevailed on several prior complaints for domain names that include the Complainant’s registered marks, and that are similar to the disputed domain name;
- If the Respondent had conducted a brief Internet search, it would have quickly discovered references to the Complainant and the wealth management services that it provides;
- The disputed domain name resolves to a website that displays the Complainant’s trademarks, thus misleading and diverting consumers to the website instead of the Complainant’s office and authorized website.
- The Respondent may also use the disputed domain name in connection with various phishing and fraudulent activities;
- The Respondent is intentionally attracting Internet users to the website associated with the disputed domain name by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website for commercial gain.
The Respondent denies the Complainant’s contentions, stating that the disputed domain name is not identical or confusingly similar to any trademark or service marks in which the Complainant has rights, that the Respondent has rights and legitimate interests in respect of the disputed domain name and did not register or use the disputed domain name in bad faith.
The Respondent contends that the Complainant is claiming rights over the dictionary word “Zion”, which refers to the hill on which the city of Jerusalem was originally built, without proof of secondary meaning or distinctiveness.
It also states that the use of the dictionary word “Zion”, whose meaning is predominantly in the domain of religion and spirituality, does not automatically create confusion with a trademark ZIONS belonging to an institution operating in the domain of banking and finance.
The Respondent asserts that it registered the disputed domain name because it has a good faith belief that its value derives from the generic or descriptive qualities of the word “Zion” (connected to religion and spirituality) and not in the specific trademark value of the word or any other alteration of such word such as “Zions”. The Respondent also submits that the addition of the term “wealth” to ZION only specifies the spiritual context in which the disputed domain name is used.
The Respondent claims that its website is still being developed and is focused on providing information about a legitimate noncommercial fair use, consisting in the promotion of corporate spiritual responsibility,
without intent for commercial gain to misleadingly divert the Complainant’s consumers or to tarnish any trademarks or service marks related to the Complainant.
The Respondent states that it been serving as a Deacon in the Church’s headquarter in Buea, Cameroon, since its ordination into office in 2014 and that, “a self-taught Web Developer makes a living from his business PANDA VENTURES LTD and freelancing on upwork.com”.
The Respondent further asserts that its habit of freely providing services for the spiritual empowerment of others explains why it developed a genuine interest in starting “Zion Wealth”, which promotes “corporate spiritual responsibility as a means of promoting the Gospel of Christ in God’s spiritual kingdom (ZION) and empowering people with a better understanding and experience of spirituality (WEALTH)”.
The Respondent claims that the use of common words in a domain name related to the descriptive meaning of the website’s services constitutes use in connection with a bona fide offering of goods or services, pursuant to paragraph 4(a)(ii) of the UDRP, and that the bona fide service the website provides at this point is information about Corporate Spiritual Responsibility. The Respondent also states that it did not register the disputed domain name for the purpose of capitalizing on the Complainant’s goodwill, but rather for the purpose of educating local businesses on the need of promoting God’s spiritual kingdom by promoting the Gospel of Christ which empowers people with spirituality.
The Respondent also states that it started building a website on the disputed domain name before an official notification of the Complaint Deficiency from the Center sent on February 2, 2017, and that, after reviewing the timeline of events, the Respondent later discovered that the Complaint was made on January 26, 2017, one day before the Respondent started building the website. The Respondent alleges that this is a mere coincidence because the Respondent was shut out from the Internet when the government suspended Internet connection in the Respondent’s entire region and only on January 27, 2017 the Respondent had access to Internet. The Respondent further states that, although the absence of Internet connection delayed the Respondent’s building of the website for the disputed domain name, starting the building process before an official notification from the Center qualifies as “evidence of Respondent’s use of, or demonstrable preparations to use, the domain name”.
The Respondent indicates that other planned projects related to religion and spirituality by the Respondent further act as proof of the Respondent’s engagement in “Zion Wealth”, and states that it plans to legally rename its business Panda Ventures Ltd in “Deobit” (where “Deo” means “God” and “bit” is the unit of measurement in computer science), adopting the slogan “Divinely Inspired Technology,” with the intention of giving his business a strong spiritual foundation and fully participating in corporate spiritual responsibility. For this purpose, the Respondent registered <deobit.com> and <deobyte.com>. The Respondent’s additional project related to religion and spirituality is Sonday Inc, which centers on spiritual social networking and whose name Sonday is derived from “Son” (Jesus Christ, the Son of God) and “day” (the widely held notion in Christianity that every son of God should live a life worthy of glorifying God every day). For this purpose, the Respondent also registered <sonday.com>.
With reference to the Complainant’s allegations as to the Respondent’s bad faith, the Respondent asserts that the Complainant, despite not being able to prove bad faith use, went ahead and submitted wrong evidence in its amended Complaint.
The Respondent notes that is not the first person to register the domain name <zionwealth.com>, as highlighted by snapshots of the corresponding website dated February 9, 2011 made available by the Internet Archive Wayback Machine at “www.archive.org”. Therefore, the Respondent states that, since the Complainant existed long before 2011, it must have known about previous ownership of the disputed domain name and equally knew when it expired but, at that point, it never considered the disputed domain name of any value; else it could have complained against the previous owner or registered the disputed domain name when it became available again. The Respondent claims that the Complainant’s failure to do so coupled with the fact that it filed the Complaint as early as three weeks after the Respondent registered the disputed domain name is evidence that the Complainant has only recently found value in the disputed domain name and is merely trying to use the Policy in bad faith to seize the disputed domain name from the Respondent.
The Respondent also states that, before registering the disputed domain name, the Respondent made searches on Google and various online trademark databases and genuinely concluded that the disputed domain name was safe to register.
The Respondent states that the fact that the Complainant has not submitted convincing evidence of bad faith use except by making false and unsubstantiated statements that the Respondent’s website is misleading, makes the Complainant guilty of, and liable to, a finding of reverse domain high jacking.
The Respondent denies to have displayed the Complainant’s trademarks on the website at the disputed domain name and to have diverted consumers to the Respondent’s website instead of the Complainant’s office and authorized website. The Respondent also states that its use of the disputed domain name for a website has in no way attracted, 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 Respondent submits that it did not adopt the disputed domain name for the purpose of capitalizing on the Complainant’s trademarks but strictly because of the descriptive meaning of the dictionary words ZION and WEALTH. The Complainant states that further evidence of this circumstance can be seen from the fact that the Respondent registered also <opession.com> as early as January 8, 2017, three days after registering the disputed domain name and long before the Complaint was filed. Said additional domain name would be derived from “opes” which means “wealth” and “Sion” which means “Zion” in Latin.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
In addition, according to paragraph 15(e) of the Rules, “If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
As stated in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration, and the goods and/or services for which it is registered, is irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
Moreover, paragraph 1.2 of the WIPO Overview 2.0 provides that “the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms (…) typically being regarded as insufficient to prevent threshold Internet user confusion”.
In the case at hand, the Complainant has provided evidence of ownership of trademark registrations valid in the United States for ZIONS, ZIONS BANK and ZIONSBANK.COM. All the Complainant’s trademarks and the disputed domain name incorporate as initial and prominent element the term “Zion”. The combination of this term with other letters (such as the letter “s” in the Complainant’s trademark), generic words (such as “bank” in the Complainant’s trademarks ZIONS BANK and ZIONSBANK.COM and “wealth” in the disputed domain name) and the generic Top-Level Domain “.com” (present both in the Complainant’s trademark ZIONSBANK.COM and in the disputed domain name) are not sufficient to exclude a finding of confusing similarity pursuant to paragraph 4(a)(i) of the Policy.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(i) of the Policy.
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, if such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701; and paragraph 2.1 of the WIPO Overview 2.0.
In order to demonstrate the Respondent’s lack of rights or legitimate interest in the disputed domain name, the Complainant states that the Complainant has been using its registered trademarks in commerce since several years before the registration of the disputed domain name, that the Respondent has not been commonly known by the disputed domain name, is not a licensee of the Complainant’s trademarks or authorized to use them, and is not using the disputed domain name as part of a bona fide offering of goods or services, or for a legitimate noncommercial use.
The Respondent does not deny that it was not authorized to register or use the Complainant’s trademark, but states that it registered the disputed domain name, combining the term “Zion” with the word “wealth”, to use it in connection with a noncommercial, not-for-profit project that is centered on “Corporate Spiritual Responsibility”. The Respondent states that it started building the website at the disputed domain name on January 27, 2017, i.e. the day the Complaint was filed, because the government of its country had suspended Internet connection in the Respondent’s entire region and only on that day the Respondent could have again access to the Internet.
The Panel notes that, according to the records, there is no evidence that the Respondent might be commonly known by the disputed domain name or have any exclusive rights of use of the terms Zion or Zion Wealth.
In evaluating whether the Respondent has legitimate interests based on the other circumstances enumerated in paragraph 4(c) of the Policy, the Panel considers that the term “Zion” encompassed in the disputed domain name corresponds to a place name which is often used as a synonym for Jerusalem as well as a term frequently used in politics and religion. The Panel also notes that the term “wealth”, combined with the term “Zion” in the disputed domain name, may also be used to describe spiritual wealth.
Assuming that the expression resulting from the combination of the terms “Zion” and “wealth” reflected in the disputed domain name may have a descriptive connotation as asserted by the Respondent, the Panel has to verify whether the disputed domain name has been genuinely used or at least demonstrably intended for such use by the Respondent in connection with the relied-upon meaning and not to trade off third-party rights in such words (see, e.g., paragraph 2.2 of the WIPO Overview 2.0).
The Panel notes that the parties have not submitted any screenshots of the website to which the disputed domain name resolved. However, the Panel has reviewed the screenshot of the Respondent’s website shown in the Internet Archive (“www.archive.org/web”) on March 4, 2017, (i.e.,following receipt of the Amendment to the Complaint) as well as the website currently online. The Panel notes that on March 4, 2017, the disputed domain name resolved to a website displaying “ZION WEALTH” at the top of the page, quotes of Bible verses, statements explaining the asserted scope of the website, which would be dedicated to sponsoring spiritual events and preaching among businesses, and stock “Lorem ipsum” web builder text underneath separate sections for “Client Needs”, “Our Products”, and “Our Models”. The website of March 4, 2017 appeared to still be in development, with contact information missing and text discussing how to set up a footer. The website currently online is substantially similar to the website of March 4, 2017, though the current website displays biblical quotes in English instead of the “Lorem ipsum” text on the website of March 4, 2017. The Panel also notes that the website currently online is made of one single page and appears to be still under development, as contact information is missing and the only active links available, under the section “Informational Links”, redirect to the website “www.gotquestions.org”.
Although the Panel accepts that there were issues with the Internet connection in the Respondent’s country at the beginning of January 2017, as reported also by international news website including BBC news (“www.bbc.com”), in light of the fact that the sole evidence available before the Panel as to the Respondent’s intended use of the disputed domain name is its current use and that available on the Internet Archive, it could not be excluded that the Respondent might have activated a website at the disputed domain name after having received notice of the dispute in order to build a defense. In questioning the truth of the Respondent’s allegations, the Panel is not finding that its statements are false, but observes that the Respondent’s assertions are not substantiated by independently verifiable supporting evidence.
The Panel also reviewed the additional domain names registered by the Respondent cited in the Response which would have been allegedly registered because of the descriptiveness of the terms encompassed therein and their connection to spirituality and religion (<deobit.com>, <deobyte.com>, <sonday.com> and <opession.com>), but ascertained that none of them is currently used in connection with active websites. The Panel also found no other verifiable supporting evidence that could sufficiently substantiate the Respondent’s allegations as to their purported use.
In view of the above, the Panel is unable to make a finding on the issue whether the Respondent has been using or made preparations to use the disputed domain name in connection with a bona fide offering of services or for a legitimate noncommercial use before receiving any notice of the dispute. Accordingly, the Panel prefers to deal with this case under the next element.
The Complainant asserts that the Respondent registered the disputed domain name in bad faith relying on the asserted well-known character of said trademarks and their confusing similarity with the disputed domain name. However, the Panel finds that the Complainant has failed to substantiate the asserted well-known character of the trademarks with appropriate evidence, such as additional information or documents about the financial or geographical extent of the Complainant’s business and consumer recognition of the trademarks. The Panel has reviewed the Complainant’s website “www.zionsbank.com” and understands that the Complainant is a substantial bank in the United States, but found nothing sufficient to support the fame of the Complainant and its trademarks.
The Panel has also reviewed the prior UDRP cases involving the Complainant and the trademark ZIONS cited in the Complaint and notes that, unlike the present case, they concerned clear typosquatting or abusive registrations of the Complainant’s trademark ZIONS in combination with terms related to financial services.
While the Panel understands the Complainant’s concerns being a financial institution about any third party use of a domain name confusingly similar to its trademarks, since they may as well be used maliciously at a moment’s notice in connection with phishing or other fraudulent activities, the Panel notes that the word “Zion” encompassed in the disputed domain name cannot be exclusively seen as a typosquatting of the trademark ZIONS, as it also corresponds to a well-known term in which the Complainant cannot claim exclusive rights of use. See, along these lines, ZB, N.A., dba Zions First National Bank v. Oneandone Private Registration, 1&1 Internet Inc / John Mike, WIPO Case No. D2017-0137 (<zionvpn.com>).
In view of the above, the Panel finds that based on the limited record before it, there is no evidence that the Respondent was aware of the Complainant’s trademark at the time of registration, and that it registered the disputed domain name to exploit the Complainant’s trademark.
In view of the above, the Panel finds that the Complainant has not proven that the disputed domain name was registered and used by the Respondent in bad faith.
The Respondent has requested a finding of Reverse Domain Name Hijacking.
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
In the present case, although the Complainant has failed to demonstrate all the elements required by the Policy, the Panel nevertheless finds that the Complainant brought the Complaint in good faith believing that it could succeed, without intention to attempt a Reverse Domain Name Hijacking or primarily to harass the Respondent. Therefore, the Panel declines to find that the Complainant has acted in bad faith.
The Panel does note in closing that should other evidence come to light, such as changed website content, the Complainant may have recourse to a fresh UDRP complaint or court action.
For the foregoing reasons, the Complaint is denied. The Respondent’s request for a finding of Reverse Domain Name Hijacking is also denied.
Luca Barbero
Sole Panelist
Date: April 7, 2017