WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zions Bancorporation v. Domains By Proxy, Inc. / Randall Comstock
Case No. D2010-1698
1. The Parties
Complainant is Zions Bancorporation of Salt Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America.
Respondent is Domains By Proxy, Inc. of Scottsdale, Arizona, United States of America / Randall Comstock of Eureka, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <zionmortgages.com> and <zionmortgagesolutions.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2010. On October 8, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 11, 2010, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2010.
The Center appointed William F. Hamilton as the sole panelist in this matter on November 30, 2010. 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.
4. Factual Background
Complainant is the owner of United States (“U.S.”) registered marks ZIONS, ZIONS BANK, and ZIONSBANK.COM for financial services, including mortgage lending and banking services. These federally registered marks will be collectively referred to as "the Marks" in this decision. Complainant, or its predecessors, have used the ZIONS mark since 1891 and registered the mark in 2000. Complainant commenced use of the ZION BANK mark in 1992 and obtained registration of the ZIONS BANK mark in 2000. Complainant began the use of ZIONSBANK.COM mark in 1995 and obtained registration of this mark in 2002. Complainant offers banking services through its “www.zionsbank.com” website.
Respondent registered the disputed domain name <zionmortgagesolutions.com> on July 5, 2010.
The disputed domain name <zionmortgages.com> was created on June 14, 2010.
5. Parties’ Contentions
Complainant asserts the disputed domain names are confusingly similar to Complainant's Marks because the disputed domain names incorporate the term "zion" which merely drops the letter "s" from Complainant's ZIONS, ZIONS BANK and ZIONSBANK.COM marks. Complainant asserts that use of the term "zion" in the disputed domain names as compared to ZIONS does not avoid confusion. Complainant asserts that the deletion of the "s" from ZIONS is of no moment and that "Zion" is confusingly similar to ZIONS. Similarly, according to Complainant, the addition of the generic terms "mortgages" and "mortgagesolutions" to "zion" does not lessen the likelihood of confusion with the Marks. Complainant further asserts that Respondent has no rights or legitimate interests in the Marks because Complainant has never licensed or authorized the use of the Marks by Respondent, and Respondent has never operated nor conducted a legitimate business utilizing the Marks. Complainant further contends that the disputed domain names were registered and are being used in bad faith to lure unsuspecting Internet users to Respondent's website that offers competitive banking services.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights: and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of these elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to Complainant's Marks. The mere dropping of the letter "s" from ZIONS coupled with the addition of generic terms does not diminish the likelihood of confusion of the domain names with Complainant's Marks. Nor does the addition of “bank” or ”bank.com” to ZIONS diminish the likelihood of confusion with disputed domain names. Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, Case No. D2000-1511 (<telstrafreeonline.com>). Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has not provided Respondent with permission or implied license to use the mark ZIONS, and Respondent has never operated a bona fide business utilizing the term "zion". Respondent has not answered the Complaint, made any assertion that it is commonly known by the term "zion" or the disputed domain names, or demonstrated that the disputed domain names constitute a legitimate, noncommercial fair use of the Marks. Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. By its default, Respondent has failed to carry its the burden of demonstrating rights or legitimate interests in the disputed domain names. Accordingly, Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent, a United States resident, had constructive knowledge of the Complainant's Marks through the Complainant's federal registrations. Additionally, when registering the disputed domain names, Respondent had actual knowledge of Complainant's Marks. Prior to the registration of the disputed domain names, Complainant had written to and advised Respondent of the Marks in a cease and desist letter pertaining to the domain name <zionsmortgageline.com>, which has since been transferred to Complainant pursuant to Zions Bancorporation v. Randall Comstock, WIPO Case No. D2010-1095. Even more tellingly, the disputed domain names resolve to the website “www.amerifinancegroup” that purports to offer mortgage services in the Salt Lake City, Utah area. Complainant is headquartered in Salt Lake City, Utah. Complainant has demonstrated Respondent registered and used the disputed domain names in bad faith. Accordingly, Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <zionmortgages.com> and <zionmortgagesolutions.com> be transferred to Complainant.
William F. Hamilton
Date: December 14, 2010