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" or "U.S."), represented by Callister Nebeker & McCullough, United States.
Respondent is Pan Simon of New York, New York, United States.
The disputed domain name, <ziosbank.com>, is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2016. On April 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's 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 Respondent of the Complaint, and the proceedings commenced on April 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 12, 2016.
The Center appointed Gary J. Nelson as the sole panelist in this matter on May 20, 2016. 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.
Complainant is the owner of at least two United States Trademark Registrations for ZIONS BANK in connection with financial services. Specifically, Complainant owns at least the following trademark registrations:
|
Country/Territory |
Registration No. |
Mark |
Classes |
Date of Registration |
|
United States |
2381006 |
ZIONS BANK |
36 |
August 29, 2000 |
|
United States |
2531436 |
ZIONSBANK.COM |
36 |
January 22, 2002 |
The disputed domain name, <ziosbank.com>, appears to have been registered on January 9, 2016. The website associated with this disputed domain name appears to contain click-through opportunities to websites owned or controlled by entities offering financial services.
Complainant is the owner of numerous trademark registrations for ZIONS BANK in the United States for financial services.
Respondent deliberately left out the letter "n" when registering the disputed domain name and is guilty of intentional cybersquatting and/or typosquatting.
Respondent is intentionally redirecting consumers, either directly or indirectly, to a website that references various banking terms and links to financial services, and likely confuses consumers as to the source of the services being offered by Complainant.
Respondent is engaging in classic typosquatting to take advantage of users seeking to find Complainant's website associated with Complainant's <zionsbank.com> domain name, and the services offered at that corresponding website.
Complainant has been using its ZIONS BANK mark in commerce since at least as early as 1891.
Respondent is not an individual, business, or other organization that is commonly known by the disputed domain name and Respondent does not possess any trademark rights in the disputed domain name.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Respondent is not a licensee of Complainant's ZIONS BANK trademark.
Respondent 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 disputed domain name, <ziosbank.com>, is confusingly similar to Complainant's ZIONS BANK trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel to "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."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Complainant has established that it owns prior rights in the ZIONS BANK trademark and the disputed domain name is confusingly similar to Complainant's ZIONS BANK trademark.
Complainant owns at least two ZIONS BANK trademark registrations in the United States.
Accordingly, Complainant has established rights in its ZIONS BANK mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, <ziosbank.com>, is confusingly similar to Complainant's ZIONS BANK trademark because the disputed domain name incorporates the entirety of Complainant's ZIONS BANK trademark and merely deletes the letter "n".
Neither the deletion of one letter from another's trademark, nor the addition of a generic Top-Level Domain suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (the deliberate misspelling of "wachovia" as <wochovia.com> was insufficient to avoid a finding of confusing similarity); Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971 (the registration of <fuijifilm.com> as a domain name found to be confusingly similar to the FUJI FILM trademark); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that the addition of the suffix ".com" does not detract from the overall impression of the dominant part of the name).
Accordingly, the deletion of the letter "n" from Complainant's ZIONS BANK trademark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words "zions," "zios", "bank," or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of the complainant; (2) complainant's rights in its related trademarks precede respondent's registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in its ZIONS BANK trademark.
Respondent is currently operating a website featuring click-through opportunities for related financial services offered by competitors to Complainant. Accordingly, the Panel concludes that Respondent's use of the disputed domain name, which is confusingly similar to Complainant's ZIONS BANK mark, and which resolves to a website presenting click-through opportunities to services competing directly with services offered by Complainant, is not a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i). See America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 ("it would be unconscionable to find […] a bona fide offering of services in a respondent's operation of [a] web-site using a domain name which is confusingly similar to the complainant's mark and for the same business").
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant's rights in the ZIONS BANK trademark. Respondent's awareness of the ZIONS BANK trademark may be inferred because the mark was registered with the U.S. Patent and Trademark Office prior to Respondent's registration of the disputed domain name and since the ZIONS BANK trademark is widely known. The relevant priority date for Complainant's trademark registrations precedes the date upon which the disputed domain name was registered. (i.e., August 29, 2000 for ZIONS BANK and January 22, 2002 for ZIONSBANK.COM versus January 9, 2016 for the disputed domain name). See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of complainant's trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 ("the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").
Respondent is using the disputed domain name to attract Internet users to a website that features numerous click-through opportunities to websites offering a variety of financial services that compete directly with the services offered by Complainant under its ZIONS BANK mark. This is further evidence of bad faith registration and use. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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, <ziosbank.com>, be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Date: June 1, 2016