The Complainant is ZB, N.A. of Salt Lake City, Utah, United States of America ("USA" or "United States"), represented by TechLaw Ventures, PLLC, USA.
The Respondent is Ming Hua Chen, Chen Ming Hua of Hefei, Anhui, China, self-represented.
The disputed domain name <nsbank.site> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2017. On March 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 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. On March 15, 2017, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant filed an amended Complaint on March 16, 2017 to respond on the issue of the language of the proceeding and to refer to email correspondence received from the Respondent. The Respondent requested that Chinese be the language of the proceeding on March 17, 2017.
The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceeding commenced on March 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2017. The Respondent filed three emails on March 23, 2017, indicating that it would like to transfer the disputed domain name to the Complainant. The Center informed the Parties that it would proceed with panel appointment process on April 13, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on April 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.
The Complainant has been doing business in the banking and finance sector under the name "Nevada State Bank" since December 1, 1959. The Complainant is the owner of registered trade marks in the United States, namely for the marks NSBANK (Registration No. 4,174,370) and NEVADA STATE BANK (Registration No. 2,862,148). These registrations were obtained on July 17, 2012, and July 13, 2004, respectively. The Complainant states that these marks are in use and registered for "application software and downloadable software for personal computers, mobile devices, and tablet devices, namely software to allow customers to access bank account information, transact bank business, and engage in consumer transactions, and financial services; namely banking; credit card services; electronic credit card transactions; commercial and consumer lending and financing; etc.".
The Complainant's parent company, Zions Bancorporation has, since May 6, 1996, been the registrant of the domain name <nsbank.com> from which the Complainant advertises and offers its banking services.
The disputed domain name was registered on March 2, 2017. The disputed domain name previously redirected Internet users to a website at "www.tvwiki.cn" where various brands and products are featured. The disputed domain name currently resolves to an inactive website.
An email communication from the Respondent to the Complainant's representative was sent on March 14, 2017, in English, proposing to transfer the disputed domain name to the Complainant for USD 1,000. The Respondent asked for compensation as it lost the domain names <nsbank.club> and <amergybank.club> to the Complainant per the decision issued by the UDRP panel in ZB, N.A. v Chen Ming Hua, WIPO Case No. D2016-2441.
1. The disputed domain name is identical to the NSBANK trade mark in which the Complainant has rights. The identical mark is included and recognizable in the disputed domain name, with the addition of the new generic Top-Level Domain ("gTLD") ".site". The gTLD is usually disregarded when considering the issue of confusing similarity. The gTLD ".site" does not distinguish the disputed domain name from the Complainant's registered NSBANK mark.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has been using the NSBANK mark in commerce since at least as early as July 26, 2011, and NEVADA STATE BANK since as early as December 1, 1959. The Complainant is not aware of any evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The use of a domain name to post a parking or landing page does not confer rights or legitimate interests arising from a "bona fide offering of goods or services".
- While the Respondent's website is not technically speaking a parking or landing page, it is a "commercial website".
- The Complainant is not aware that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name, even if it has not acquired any trade mark or service mark rights. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and neither has it obtained the authorization from the Complainant to use the NSBANK trade mark.
3. The disputed domain name was registered and is being used in bad faith, and this is seen from the following:
- The Respondent registered the dispute domain name that includes the registered mark NSBANK which is identical to the Complainant's registered mark NSBANK. The use of the virtually identical mark 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 registered trade mark.
- The Respondent is trying to exploit the goodwill of the Complainant and its trade marks by diverting customers of the Complainant from the Complainant's website to the Respondent's website for commercial gain or malicious purposes by creating a likelihood of confusion with the Complainant's NSBANK trade mark.
- By including the Complainant's identical registered trade mark in the disputed domain name, the Respondent is intentionally creating a likelihood of confusion with the Complainant's NSBANK mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
- The disputed domain name directs consumers, directly or indirectly, to the Respondent's commercial website. The use of the Complainant's NSBANK mark in the disputed domain name is intentionally misleading for commercial gain reasons, and would divert consumers to the Respondent's website instead of the Complainant's official website. By using the Complainant's identical registered mark, the Respondent is inappropriately implying an affiliation, association, sponsorship, or endorsement of the Respondent's website by the Complainant.
- Bad faith registration of a domain name can be found when the respondent "knew or should have known" about the existence of the complainant's trade marks, especially where the complainant's marks are well known or in wide use at the time the domain name was registered. In this case, the email of March 14, 2017, from the Respondent to the Complainant's representative offering to sell the disputed domain name for USD 1,000 shows that the Respondent was aware of the Complainant's mark. The offer to sell shows bad faith registration and use.
- The Complainant's registered marks were well known and in wide use at the time the disputed domain name was registered. By including the Complainant's registered mark NSBANK in the disputed domain name, the Respondent knew or should have known about the Complainant's registered marks at the time it registered the disputed domain name. Additionally, the disputed domain name is identical to the Complainant's domain name <nsbank.com>, except for the use of the gTLD ".site". A simple Internet search of the Complainant's identical mark would have easily identified the Complainant's website located at "www.nsbank.com" and the Complainant's identical mark.
- Because the Respondent's website is accessed using the disputed domain name which includes the Complainant's identical registered trade mark NSBANK, the use of the disputed domain name is misleading, and the Respondent may also use it in connection with various phishing and fraudulent activities.
- The Respondent's use of the Complainant's NSBANK mark may tarnish the Complainant's trade mark.
- The Respondent's bad faith is also shown by the fact that it registered the disputed domain name even after it had been ordered (on January 19, 2017) to transfer another two domain name registrations of the Complainant －<nsbank.club> and <amegybank.club> (AMEGY BANK being a trade mark of the Complainant) in ZB, N.A. v Chen Ming Hua,supra.
The Respondent did not file a formal response beyond the three emails on March 23, 2017, indicating that it would like to transfer the disputed domain name to the Complainant.
The language of the Registration Agreement is Chinese, whereas the Complaint was filed in English. The Complainant requested that the language of the proceeding be English, and provided the following supporting arguments:
(i) the Complainant is an organization based in the United States and conducts all of its business in English;
(ii) the disputed domain name is in English, and the Respondent chose to register a domain name in English;
(iii) the Complainant is unable to communicate in Chinese;
(iv) given that the disputed domain name is in English, the Respondent may likely be able to communicate in English;
(v) the Complainant is not in a position to proceed in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint and the supporting annexes;
(vi) it would not be fair to, and would place an undue burden on, the Complainant to be forced to conduct the proceeding in Chinese;
(vii) the Complainant has already incurred expense to file the Complaint and to prosecute this proceeding to protect its valuable trade marks; and it would be unfair and inequitable to also require the Complainant to incur the additional expense of translation;
(viii) the Respondent sent emails to the Complainant's representative in English, which evidences that the Respondent understands English and is able to communicate in English.
The Respondent requested for Chinese to be the language of the proceeding.
Paragraph 11(a) of the Rules provides that: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". The Respondent appears to be comfortable and familiar with English, as evidenced by its choice of the disputed domain name and the email communication with the Complainant's attorney. Taking into account the need to ensure that the administrative proceeding takes place with due expedition (per paragraph 10(c) of the Rules), the Panel determines that it will accept the filings by the Complainant in English and the correspondence by the Respondent in Chinese, and render its decision in English. To impose a requirement for the Complainant to translate all the documents and evidence into Chinese would invariably delay the proceeding.
The Panel believes that this would be the equitable and most expeditious way of proceeding, and does not see that the Respondent will be prejudiced by the Panel's decision in regard to this issue.
The Complainant has established it has trade mark rights in NSBANK. The identical mark been incorporated into the disputed domain name in its entirety and is identifiable therein. It is a well-established principle that one may disregard the gTLD (or respective Top-Level Domain Name) when considering the issue of confusing similarity or identity under paragraph 4(a)(i) of the Policy. The Panel finds that the disputed domain name is identical to the Complainant's trademark and that paragraph 4(a)(i) of the Policy has been established by the Complainant.
Paragraph 4(c) of the Policy provides that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trade mark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not demonstrated its rights to and/or legitimate interests in the disputed domain name.
Notwithstanding the Respondent's failure to do so, the Complainant is still required to establish each of the elements stipulated under paragraph 4(a) of the Policy. In relation to paragraph 4(c) of the Policy, the Complainant has to satisfy a minimum requirement of showing prima facie evidence of the Respondent's lack of rights to or legitimate interests in the disputed domain name. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)
The Panel finds that a prima facie case has been established, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Complainant has at any time granted a licence or permitted the Respondent to use the Complainant's NSBANK trade mark or to apply for any domain name incorporating the Complainant's trade mark; there is no evidence that the Respondent is known by the disputed domain name; and there is no evidence that the Respondent is using the disputed domain name in connection with a legitimate noncommercial or fair use of the disputed domain name, nor in connection with a bona fide offering of goods or services. On the contrary, and as set out below, the Respondent's offer to sell the disputed domain name leads the Panel to conclude that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been established by the Complainant.
The Panel finds, as a starting point, the fact that the Respondent's act of, notwithstanding the UDRP decision issued against it in the case ZB, N.A. v Chen Ming Hua, supra,involving the same Complainant's NSBANK mark, registering the disputed domain name incorporating the same NSBANK trade mark of the Complainant, is registration and use in bad faith. The Respondent clearly knew of the Complainant's mark and proceeded to register the disputed domain name, notwithstanding the decision issued in relation to the domain name <nsbank.club>.
Taking into account all the other factors in this case, the Panel finds that the Complainant has established its case showing that the disputed domain name was registered and is being used in bad faith. Essentially, the Respondent, by using the disputed domain name to redirect Internet users to another commercial website, "[has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the [C]omplainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location" (paragraph 4(b)(iv) of the Policy). Further, the Respondent appears to have registered the disputed domain name to prevent the Complainant, as the owner of the trade mark from reflecting the mark in a corresponding domain name, and there appears to be a pattern of such conduct (paragraph 4(b)(ii) of the Policy). The Panel also finds that the Respondent's offer to sell the disputed domain name to the Complainant for USD 1,000 is further evidence of the Respondent's bad faith (paragraph 4(b)(i) of the Policy).
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been established by the Complainant.
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 <nsbank.site> be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: April 23, 2017