WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zions Bancorportation v Domain Admin, Private Registrations Aktien Gesellschaft / Domain Admin, Privacy Protection Service Inc d/b/a PricacyProtect.org
Case Number: D2014-1798
1. The Parties
The Complainant is Zions Bancorporation of Salt Lake City, Utah, United States of America represented by Callister Nebeker and McAuliffe, United States of America.
The Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent & the Grenadines / Domain Admin, Privacy Protection Service Inc d/b/a PricacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <zionsban.com> is registered with PDR Ltd d/b/a PublicDomainRegistry.com ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2014. On October 15, 2014, the Center transmitted by email to the Registrar a request for Registrar verification in connection with the disputed domain name. On October 16, 2014, 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 of the Registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on October 21, 2014, providing the Registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 24, 2014.
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(a) and 4(a) the Center formally notified the Respondent of the Complaint and the proceedings commenced on October 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2014. The Respondent did not submit any Response. Accordingly the Center notified the Respondent's default on November 14, 2014.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on December 8, 2014. 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
The Complainant is a financial services corporation. It owns the following trademarks registered with the United States Patent and Trademark Office (the "USPTO"):
These are as follows:-
ZIONS BANK - registration number 2381006;
ZIONSBANK.COM – registration number 2531436; and
ZIONS – registration number 2380325.
These marks are in use by the Complainant and registered for inter alia "financial services, namely banking, mortgage lending and banking, trustee representatives, investment management services, escrow services, namely holding stock certificates until paid, estate and probate trust management, federal and municipal bond underwriting services and federal and municipal bond brokerage services, financial analysis and consultation, and bond private placements, namely finding and arranging for purchasers to buy bonds and advising municipalities on bond structuring".
The Panel has seen copies of the USPTO Certificates of Registration for the above marks which are set out at Annex 4 to the Complaint.
The Complainant is also the Registrant of the domain name <zionsbank.com> from which the Complainant advertises and offers its banking services. This was registered on July 5, 1995.
The Complainant has been using the ZIONS BANK mark in commerce since at least as early as 1992 and obtained federal registration for the mark on August 29, 2000. It has been using its ZIONSBANK.COM mark commercially since at least as early as 1995 and obtained registration for the mark on January 22, 2002. It has been using its ZIONS mark commercially since at least 1891 and obtained registration for the mark on August 29, 2000.
The Respondent registered the domain name in dispute no earlier than October 17, 2005, and renewed it on October 1, 2014. According to the Complainant the Respondent has been using the domain name in dispute to access customers to its own website which provides direct or indirect links to various financial services which are identical or similar to the type of services offered by the Complainant under its registered marks. A copy of an image of the Respondent's website taken on October 9, 2014, is annexed as Annex 5 to the Complaint.
In the absence of a Response the Panel proceeds to decide this Complaint on the basis of the evidence adduced by the Complainant only but which it finds to be true.
5. Parties Contentions
1. The Complainant submits that it owns and uses trademark registrations for trademarks which are confusingly similar to the domain name in dispute.
2. There is no evidence that the Respondent has any rights or legitimate interests in respect of the domain name in dispute.
3. The evidence relating to the Respondent's website is evidence that the domain name in dispute was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant submits that the domain name in dispute <zionsban.com> is confusingly similar to the Complainant's trademark registrations for ZIONS BANK, ZIONSBANK.COM and ZIONS which are referred to above. It submits that the domain name in dispute excludes the letter K after "zionsbank" which does not act to distinguish the disputed domain name from the Complainant's registered marks. It also submits that the disputed domain name is identical to the mark ZIONS except for the letter "k" being excluded from the word "bank". The use of the suffix "ban" is intended to be an abbreviation for the word "bank". It submits that this appears to be an effort to take advantage of users seeking to find the domain name which is <zionsbank.com> and the services offered at that website, but who mistakenly typed the domain name with one extra letter.
In the Panel's view the Complainant has succeeded in showing that the domain name in dispute is confusingly similar to a trademark or service mark for which the Complainant has rights.
B. Rights or Legitimate Interests
According to the Complainant there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. To the contrary the Complainant has been using the mark ZIONS BANK commercially since 1992 and the mark ZIONS commercially since 1891. There is no evidence that the Respondent is a Licensee of these marks and has not otherwise obtained authorisation to use the Complainant's marks. The Complainant also relies upon the evidence of the Respondent's website to show that the Respondent is not using the disputed domain name as part of a bona fide offering of goods or services for a legitimate noncommercial use.
On the basis that there is no evidence to the contrary from the Respondent the Panel finds for the Complainant with regard to this element.
C. Registered and Used in Bad Faith
The Complainant submits that the Respondent registered the domain name in dispute which contains a dominant portion of and is virtually identical to the Complainant's registered marks (referred to above) and relied upon. It submits that while there may be insufficient information to confirm that the Respondent's website using the domain name is operated by a competitor, the nature of the website is such that the Respondent has clearly tried to divert customers of the Complainant from the Complainant's website to the Respondent's website by using the dominant portion of the Complainant's marks.
In the Panel's view it is clear that the domain name in dispute accesses a website that provides direct or indirect links to financial services which are similar to the type of services offered by the Complainant under its registered marks and it is probable that this would confuse consumers as to the source of the goods being offered under the Complainant's marks. It follows that the Respondent's website is misleading. The Panel also notes that the Respondent has also used the mark ZIONS on the website associated with the disputed domain name. In these circumstances the Panel finds that the domain name in dispute was registered and is being used in bad faith by the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name in dispute <zionsban.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: December 22, 2014