The Complainants are Vectra Bank Colorado, Zions First National Bank and Amegy Bank National Association of Salt Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America.
The Respondent is Fluder of Bourgoin, Isere, France, self-represented.
The disputed domain names <amegybank.online>, <vectrabank.online> and <zionsbank.online> are registered with Dynadot, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2015. On November 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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 proceeding commenced on November 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2015. The Response was filed with the Center on November 19, 2015.
On November 25, 2015, the Center received a Supplemental Filing from the Complainant. The Center acknowledged its receipt, and informed the parties that it would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject it.
The Center appointed Knud Wallberg as the sole panelist in this matter on November 26, 2015.
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 Complainants have requested to consolidate the proceedings for all three disputed domain names into one proceeding for the following reasons:
- Each Complainant is a subsidiary of Zions Bancorporation, a Utah corporation, and they are therefore affiliated entities under common control.
- The disputed domain names identified in the Complaint all include the main trademark of each of the affiliated Complainants.
- The arguments made in the Complaint are virtually identical for each disputed domain name.
- Each Complainant shares a common legal interest and Complaint against the Respondent.
- The Respondent's acts have affected the rights and interests of each Complainant in a similar fashion.
In National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021, the panel held that the consolidation of multiple complaints in a single complaint should be permitted if the complainants (i) have a common grievance against the respondent; and (ii) it would be equitable and procedurally efficient to permit the consolidation of complaints.
The findings by the panel in the National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, supra have subsequently been applied to paragraph 4(f) of the Policy and paragraph 3(c) of the Rules in a number of UDRP decisions such as in Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331 and will also be applied by the Panel in this case.
As far as the first criteria is concerned a common grievance against the respondent the panel in the National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, supra held that this may be the case inter alia where the complainants have a common legal interest in the trademark rights on which the complaint is based and/or are the target of a common conduct by the Respondent which has clearly affected their individual legal interests in a similar fashion.
Based on the above arguments which are clearly supported by the facts of the present case the Panel finds that this criteria is fulfilled.
As far as the second criteria is concerned the panel in the National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, supra listed a number of factors that can be taken into consideration when determining whether it would be equitable and procedurally efficient to permit the consolidation of complaints.
In the present case the Panel finds thatthe Complainants' substantive arguments made under each of the three elements of the Policy are common to the disputed domain names, thatall Complainants are represented by the same representative, thatthe Complainants clearly stipulate each disputed domain name, the individual Complainant making a claim thereto, the right or rights relied upon by that Complainant, the remedy sought in respect of the disputed domain name, and the registrar with whom the disputed domain name is registered, that the case involves a relatively small number of domain names and that relevant filings, including any annexes, would not appear to be unreasonably voluminous.
Based on the above and noting that the Respondent has not objected to the requested consolidation, the Panel determines that this Complaint consists of multiple Complainants that should, be permitted to have their Complaints consolidated into a single Complaint for the purpose of the present proceeding under the Policy.
The Complainants filed a Supplementary Filing entitled "Reply to Respondent's Response" on November 25, 2015.
In the receipt of the filing the Center stated the following:
"The Rules for the Uniform Domain Name Dispute Resolution Policy ('Rules') provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. Accordingly, the Panel (when duly appointed) will be informed of the Center's receipt of this Supplemental Filing. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any."
In this case, the Complainants' Supplemental Filing comments on certain arguments put forward in the Response in particular as to the calculation of the price that the Respondent is offering to sell the disputed domain names for to the Complainants. The sales prices themselves are − and were − publicly available at the time of filing of the Complaint since they appear on "sedo.com" website, just as the Complainants were aware of the Respondent's intentions behind the registration of the disputed domain names, cf. the letter from the Respondent enclosed as Annex 6 of the Complaint. The Panel therefore finds that the Complaint and the Response contains the facts that are necessary to render a decision under the UDRP and that the Supplemental Filing shall not be admitted.
The Complainants are Vectra Bank Colorado, Zions First National Bank and Amegy Bank National Association.
The Complainant Vectra Bank Colorado is the owner of the following trademarks registered with the United States Patent and Trademark Office: VECTRA BANK COLORADO (Stylized), VECTRA BANK COLORADO, VECTRA BANK, and VECTRA for banking services.
The Complainant Zions First National Bank is the owner of the following trademarks registered with the United States Patent and Trademark Office: ZIONS BANK, ZIONSBANK.COM and ZIONS all registered for various financial services.
The Complainant Amegy Bank National Association is the owner of the following trademarks registered with the United States Patent and Trademark Office: AMEGY, AMEGY BANK and AMEGYBANK (Stylized) all registered for various banking services.
Zions Bancorporation, the parent company of the Complainants, is the registrant of the domain names <vectrabank.com>, <zionsbank.com> and <amegybank.com>.
The Respondent has not provided specific information on the nature of his activities, apart from the information that can be deducted from the facts and arguments put forward in the case including the filed Response (see below).
The Respondent registered the disputed domain names on October 30, 2015.
The Complainants state that the disputed domain names <zionsbank.online>, <vectrabank.online> and <amegybank.online> are identical or confusingly similar to the registered marks of the Complainants referenced above.
By including the Complainants' registered marks, the Respondent is intentionally creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website for commercial gain.
Additionally, there is a risk that Internet users may believe there is a connection between the disputed domain names and the Complainants' products and services, which is enhanced by the fact that the Respondent has also displayed the mark ZIONS BANK, VECTRA BANK and AMEGY BANK on the websites associated with the disputed domain names.
The Respondent is not a licensee of any of the Complainants' trademarks, and has not otherwise obtained authorization to use any of the Complainants' marks.
The Respondent, as an individual, business, or other organization, has not been commonly known by the disputed domain names.
Before the filing of this Complaint, the Respondent has not used, or made demonstrable preparations to use, the disputed domain names, or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services, nor is the use of the disputed domain names to post parking and landing pages a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Complainants state that the use of identical or similar marks in the disputed domain names indicates that the disputed domain names were registered primarily for the purpose of disrupting the business of the Complainants or otherwise is intended to take advantage of the goodwill associated with the Complainants' registered trademarks.
Further, a letter from the Respondent to the Complainant Zions First National Bank clearly shows that the Respondent registered the disputed domain name <zionsbank.online> primarily for the purpose of selling it to the Complainant. Such registration constitutes evidence of bad faith registration and use of the said domain name.
The Respondent is clearly trying to exploit the goodwill of the Complainants and their trademarks by diverting customers of the Complainants from the Complainants' websites to the Respondent's website for commercial gain or malicious purposes by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites.
The disputed domain names all resolve to parking or landing pages which may contain malware, or could include competitive products and services of the Complainants and thereby could tarnish the trademarks of the Complainants.
The following excerpts are copied from the Response filed by the Respondent:
"We registered these domains only to promote New gTLD Program and especially dot ONLINE extension, not for commercial gain, or to create a likelihood of confusion. Because this is important for the success of the new domain extensions, that a lot of companies embrace new gTLDs and know the dot ONLINE potential, making it the perfect choice for anyone looking to create an online presence.
New gTLDs and especially dot ONLINE extension will open up new space in which companies can improve security, build trust and authenticity, embrace new business opportunities, and support new business models, and they have to know it, that's why we registered these domains, to focus on it.
So whether they buy the domains from us or via UDRP, the only thing that counts is that they use dot ONLINE and will become more relevant and popular, this is our goal.
Moreover, our price $150 per name Annexe1, Annexe2, Annexe3, is not considered as a commercial gain. We did not request a valuable consideration in excess of out-of pocket costs. It is a relatively modest sum, far removed from the sort of amounts which were typically sought by 'cybersquatters'.
The sum $150 fairly represents the intrinsic value of the domain name, lower than median price across all sales in SEDO market place which is $616 Annexe4, and the lost opportunity costs associated with its sale. Thus the Panel cannot conclude that our price can be described as a 'hold-up' as an economist would use that term.
Our domain names are not used to target the types of products sold by any specific trademark holder. Accordingly, based upon the website associated with the disputed domain names, only made to explain why new gTLDs are essential, the Panel cannot identify any way in which the Respondent (ourselves) could be said to have intentionally created a likelihood of confusion with the Complainant's mark as the Complainant contends.
Complainant has not presented evidence that we are attempting to disrupt the business of a competitor.
Complainant has not presented evidence that we, for commercial gain, have intentionally attempted to attract Internet users to his website or other online location by creating a likelihood of confusion as to Complainant acting as source, sponsor, affiliate or endorser of his website or online location."
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant.
The disputed domain name <amegybank.online>, contains the Complainant Amegy Bank National Association's distinctive AMEGY BANK mark with the addition of the generic Top-Level Domain (gTLD) ".online" designation. Since the gTLD designation may be disregarded for the purpose of this proceeding, the Panel finds that the disputed domain name <amegybank.online> is identical to a mark in which the Complainant Amegy Bank National Association has rights.
The disputed domain name <vectrabank.online> contains the Complainant Vectra Bank's distinctive VECTRA BANK mark with the addition the ".online" gTLD designation. Since the gTLD designation may be disregarded for the purpose of this proceeding, the Panel finds that the disputed domain name <vectrabank.online> is identical to a mark in which the Complainant Vectra Bank has rights.
The disputed domain name <zionsbank.online> contains the Complainant Zions First National Bank's distinctive ZIONS BANK mark with the addition the ".online" gTLD designation. Since the gTLD designation may be disregarded for the purpose of this proceeding, the Panel finds that the disputed domain name <zionsbank.online> is identical to a mark in which the Complainant Zions First National Bank has rights.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are fulfilled.
According to the Complaint, the Complainants have not licensed or otherwise permitted the Respondent to use their trademark. The Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent claims that he registered the disputed domain names "only to promote New gTLD Program and especially dot ONLINE extension, not for commercial gain, or to create a likelihood of confusion". It is obvious that this intention does not provide the Respondent with any rights or legitimate interests to register ".online" domain names that contain the trademarks of third parties such as the trademarks of the Complainants in this case.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii)of the Policy are also fulfilled.
Paragraph 4(a)(iii) of the Policy requires the Complainants to prove registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides a list of non-exhaustive examples of circumstances which shall be evidence of registration or use in bad faith:
(i) circumstances indicating that the domain name holder 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 holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder 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 domain name holder has engaged in a pattern of such conduct; or
(iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder'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 holder's website or location or of a product or service on the domain name holder's website or location.
Accordingly, for the Complainants to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
In this case it is clear from the facts that the disputed domain names were registered for the purpose of selling the disputed domain name registrations to the Complainants or any other third parties. This is explicitly stated in the letter from the Respondent, in the sales offers on "sedo.com" and also from the content of the filed Response. The price tag for all three disputed domain names are at present USD 150 but have previously been set at USD 500. The Respondent claims in the Response that the requested price is a "modest sum" that cannot be regarded as "commercial gain". However, the Panel finds that a sum of USD 500 per each disputed domain name exceeds the out-of- pocket costs related to the registration of the disputed domain names.
In the Panels view, this attempt to sell the disputed domain names for such figures undercuts any positive inference as to the Respondent's intentions in registering the disputed domain names.
The Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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, <amegybank.online>, <vectrabank.online> and <zionsbank.online>, be transferred to the Complainants.
Knud Wallberg
Sole Panelist
Date: December 9, 2015