WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zions Bancorporation v. Ryan G Foo, PPA Media Services / Domain Admin, Whois Privacy Corp.

Case No. D2014-2278

1. The Parties

The Complainant is ZIONS Bancorporation of Salt Lake City, Utah, United States of America.

The Respondents are Ryan G Foo, PPA Media Services of Santiago Chile, and Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.

2. The Disputed Domain Name and Registrar

The disputed domain name is <zionsbanl.com>. It is registered with Internet.bs Corp, of Nassau, Bahamas (the "Registrar").

3. Procedural History

According to the information and documents provided by the WIPO Arbitration and Mediation Center (the "Center"), the history of this proceeding is as follows:

- The Complaint was filed with the Center on December 29, 2014. The Complaint identified as the registrant of the disputed domain name the Respondent Domain Admin, Whois Privacy Corp.

- On December 30, 2014, the Center transmitted by email to the Registrar a Request for Registrar Verification in connection with the disputed domain name. On January 12, 2015, the Registrar transmitted by email to the Center its verification response advising that the actual registrant of the disputed domain name is the Respondent Ryan G Foo, PPA Media Services, and providing applicable contact details.

- On January 12, 2015, the Center invited the Complainant to amend the Complaint based on the registrant information received from the Registrar. The Complainant filed an Amendment to the Complaint on January 15, 2015.

- The Center verified that the Complaint with the Amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

- In accordance with Rules paragraphs 2(a) and 4(a), on January 21, 2015 the Center formally notified both Respondents of the Complaint, and this proceeding commenced on that date. The Center advised both Respondents that the due date for a Response to the Complaint was February 10, 2015.

- The Respondents did not file a Response by the specified due date or at any time thereafter. The Center delivered a Notification of Respondent Default to the Respondents on February 16, 2015.

- The Center appointed Bradley J. Freedman as the sole Panelist in this proceeding on March 3, 2015. The Panelist submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.

- On March 12, 2015, the Panel issued a Direction and Order inviting the Complainant and the Respondents to file additional evidence and submissions regarding certain issues. In response to the Direction and Order, the Complainant filed a Second Amendment to Complaint on March 12, 2015. Neither of the Respondents filed any submissions or evidence, or otherwise responded to the Direction and Order, by the specified due date or at any time thereafter.

Based on the information and documents provided by the Center, the Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules, and that all technical requirements for this proceeding have been met.

4. Factual Background

The following information is derived from the Complaint and the Amendments to the Complaint and supporting evidence submitted by the Complainant:

- The Complainant is a corporation incorporated under the laws of Utah with its place of business in Salt Lake City, Utah.

- The Complainant uses, and is the owner of, the trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM, each of which is registered in the United States of America for use in association with various kinds of financial services, including banking and mortgage lending.

- The ZIONS trademark was registered in the United States of America on August 29, 2000, under Registration No. 2,380,325. The Complainant has used that trademark since at least as early as 1891.

- The ZIONS BANK trademark was registered in the United States of America on August 29, 2000, under Registration No. 2,381,006. The Complainant has used that trademark since at least as early as 1992.

- The ZIONSBANK.COM trademark was registered in the United States of America on January 22, 2002, under Registration No. 2,531,436. The Complainant has used that trademark since at least as early as 1995.

- The Complainant has been the registered owner of the domain name <zionsbank.com> since July 5, 1995. The Complainant uses that domain name for a website that advertises and offers the Complainant's financial services.

- The disputed domain name was registered on January 3, 2007 (after each of the Complainant's trademarks were registered) and was renewed on December 6, 2014.

- The disputed domain name resolves to a website that displays the title "zionsbanl.com", provides a search engine that allows users to "search ads", and provides a list of "Related Links" with topics such as "bank loans", "investment calculator", "Internet banking" and "best mortgage rates".

- The Respondents are not licensees of the Complainant's trademarks and do not have authorization to use the Complainant's trademarks.

The Respondents have not filed a Response to the Complaint or disputed the Complainant's factual assertions or evidence in any other manner.

5. Parties' Contentions

A. Complainant

The Complainant contends as follows:

- The Complainant is the owner of the registered ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks, and the disputed domain name is confusingly similar to those trademarks because it is a deliberate misspelling of the word "bank" in order to intentionally create a likelihood of confusion with the trademarks.

- The Respondents have no rights or legitimate interests in respect of the disputed domain name, and do not have any right to use the Complainant's trademarks.

- The Respondents registered and are using the disputed domain name in bad faith because the Respondents are using the disputed domain name to confuse Internet users and divert the Complainant's customers from the Complainant's website to the Respondents' website all for the purpose of disrupting the Complainant's business and for the Respondents' own commercial gain.

B. Respondents

The Respondents have not filed a Response to the Complaint or answered the Complainant's contentions in any other manner.

6. Discussion and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as "cybersquatting" or "cyberpiracy". The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants.

The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set forth in Policy paragraph 4(a): (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy.

Rules paragraph 10(b) requires that the Panel ensure that each party is given a fair opportunity to present its case. Each of the Respondents was given notice of this proceeding in accordance with Rules paragraph 2. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice of the Complaint to each Respondent. Further, the Registrar's Domain Registration Agreement (section 5(a)) requires the Respondent Ryan G Foo, PPA Media Services to keep the contact information in the Whois record for the disputed domain name current and complete. The Respondent Ryan G Foo, PPA Media Services cannot hide behind a failure to provide accurate and complete contact information to the Registrar. In the circumstances, the Panel finds that each of the Respondents have been given a fair opportunity to answer the Complaint and present their case, and in accordance with Rules paragraph 14(a) the Panel will proceed to a decision on the Complaint.

The Respondents' failure to file a Response does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that the Panel deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw inferences as the Panel considers appropriate from the Respondents' failure to file a Response to the Complaint. In the circumstances, the Panel's decision is based on the Complainant's assertions and evidence and inferences drawn from the Respondents' failure to file a Response, as set forth in this decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), section 4.6.

The Complainant's Second Amendment to Complaint (submitted after the Panel issued the Direction and Order) clarified that the Complainant's contentions apply to both Respondents, even though the information provided by the Registrar indicates that the Respondent Ryan G Foo, PPA Media Services is the registrant of the disputed domain name and the Respondent Domain Admin, Whois Privacy Corp. is merely a Domain Name Privacy Service provider. In order to fully address the Complainant's contentions, the Panel will consider and refer to both Respondents. Nevertheless, for the purposes of assessing whether there has been bad faith registration and use of the disputed domain name, the relevant conduct and intention is that of the actual registrant of the disputed domain name (i.e. the Respondent Ryan G Foo, PPA Media Services) rather than the Domain Name Privacy Service provider listed in the Whois database (i.e. Domain Admin, Whois Privacy Corp.). See WIPO Overview 2.0, section 4.9.

A. Identical or Confusingly Similar

The Complainant is the owner of the ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks, each of which is registered in the United States of America for use in association with various kinds of financial services, including banking and mortgage lending. The Complainant also uses its ZIONSBANK.COM trademark as the domain name <zionsbank.com>. The Complainant asserts that it has used the ZIONS trademark for over 100 years, and the ZIONS BANK and ZIONSBANK.COM trademarks since 1992 and 1995 respectively. The Complainant's trademarks were registered many years before the disputed domain name was registered. The Respondents have not contested the Complainant's assertions. In the circumstances, the Panel finds that the Complainant has rights in the ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks.

The Policy requires that the disputed domain name be "identical or confusingly similar" to the Complainant's trademarks. Neither the Policy nor the Rules provide any explicit guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. Nevertheless, the consensus reflected in previous UDRP decisions is that the appropriate test for confusing similarity is a literal comparison of the domain name in dispute and the complainant's trademark. See WIPO Overview 2.0, section 1.2. The literal comparison approach is supported by a number of considerations, which have been discussed in various UDRP decisions. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung, WIPO Case No. D2004-0490; Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC, WIPO Case No. D2007-0337; and Scania CV AB (Publ) v. ScaniaFinance.co.uk, WIPO Case No. D2008-0113. For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the Complainant's trademarks.

The disputed domain name and the Complainant's trademarks are visually and phonetically similar. The only differences between the Complainant's ZIONS trademark and the disputed domain name, <zionsbanl.com>, are the addition of the term "banl" and the ".com" suffix. The only differences between the Complainant's ZIONS BANK trademark and the disputed domain name, <zionsbanl.com>, are the substitution of the letter "l" for the letter "k" and the addition of the ".com" suffix. The only difference between the Complainant's ZIONSBANK.COM trademark and the disputed domain name, <zionsbanl.com>, is the substitution of the letter "l" for the letter "k".

The ".com" suffix is typically irrelevant for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark. Rather, one generally looks to the second level domain for that determination, since the ".com" suffix is merely descriptive of the registry services. See WIPO Overview 2.0, section 1.2.

The addition of generic or descriptive words to a trademark in a domain name normally does not avoid a finding of confusing similarity, particularly where the trademark constitutes the dominant or principal component of the domain name. Further, the use of a generic or descriptive word that describes the products or services with which the trademark is ordinarily used may exacerbate or increase the likelihood of confusion. See WIPO Overview 2.0, section 1.9.

The substitution of the letter "l" for the letter "k" appears to be a deliberate misspelling that reflects the fact that the letters "k" and "l" are next to each other on the standard QWERTY keyboard. It appears that the Respondent is engaged in a practice known as "typosquatting" – the registration of a domain name that is a slight variation from a well-known mark in order to divert Internet traffic. That practice takes advantage of Internet users who inadvertently type an incorrect address when seeking to access the trademark owner's website. Typosquatters often profit by selling advertisements and links to websites operated by the trademark owner's competitors.

A domain name that contains a common or obvious misspelling of a trademark will normally be found to be confusingly similar to the trademark if the misspelled trademark remains the dominant or principal component of the domain name. See WIPO Overview 2.0, section 1.10.

In light of the Respondents' use of the disputed domain name, and in the absence of any explanation or rationale put forward by the Respondent for the registration and use of the disputed domain name, the Panel finds that the disputed domain name was intended by the Respondent to be confusingly similar to the Complainant's ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks.

For those reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.

B. Rights and Legitimate Interests

The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interests in respect of the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in the UDRP decisions is that a complainant's burden of proof regarding this element must be applied in light of the fact that the nature of the registrant's rights or legitimate interests, if any, in a domain name lies most directly within the registrant's knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to provide evidence of its rights or interests in the domain name. See WIPO Overview 2.0, paragraph 2.1.

The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain name because: (1) the Complainant has not authorized the Respondents to register or use the disputed domain name or the Complainant's ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks; and (2) the Respondents are not using the disputed domain name for a bona fide offering of goods and services or for a legitimate noncommercial use, because the Respondents use the disputed domain name for a website that provides links to third-party websites.

Except for the assertions in the signed and certified amended Complaint, the Complainant has not provided any evidence of trademark searches or other investigations to indicate that the Respondents do not have any interest in any marks that include the term "zions" or "zions bank" and are not commonly known as "Zions" or "Zions Bank". In some circumstances, the omission of that evidence might be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this case (including the names of the Respondents and the distinctive nature of the Complainant's trademarks), the signed and certified amended Complaint together with an adverse inference from the Respondents' failure to respond to the Complaint or provide any justification for the registration and use of the disputed domain name are sufficient to satisfy the Complainant's evidentiary burden.

Even though the Respondents have not filed a Response to the Complaint and have not contested the Complainant's assertions, it is incumbent upon the Panel to consider whether the Respondents' use of the disputed domain name demonstrates rights or legitimate interests in the disputed domain name. See WIPO Overview 2.0, section 4.6.

According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant's rights to or legitimate interests in a domain name: (i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; (ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or (iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's mark.

The information provided by the Registrar indicates that the Respondent Ryan G Foo, PPA Media Services is the registrant of the disputed domain name and the Respondent Domain Admin, Whois Privacy Corp. is merely a Domain Name Privacy Service Provider. The Complainant has not provided any evidence to indicate otherwise.

Policy paragraph 4(c)(i) is not applicable. To satisfy the requirements of Policy paragraph 4(c)(i), the Respondents' use of the disputed domain name must be in connection with a bona fide offering of goods or services. In some circumstances, a website providing search results or links to other websites might constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondents' use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant's registered ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks, which are distinctive and specific to the Complainant in connection with financial services and have been used for many years; (b) there is no apparent connection or relationship between the disputed domain name and the name or business of either of the Respondents; and (c) the Respondents do not use the disputed domain name to advertise or sell the Respondents' own wares or services, but rather the Respondent Ryan G Foo, PPA Media Services uses the disputed domain name to provide links to third-party websites that offer financial services in competition to the Complainant's products. See WIPO Overview 2.0, paragraph 2.6.

Policy paragraph 4(c)(ii) is not applicable. The Respondents do not contend, and there is no evidence, that the Respondents have been commonly known by the disputed domain name or that the disputed domain name is derived from the Respondents' trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable. The Respondents do not contend, and there is no evidence, that the Respondents are making a non-commercial or fair use of the domain name. To the contrary, the evidence establishes that the Respondent Ryan G Foo, PPA Media Services is using the disputed domain name for commercial purposes – a website that provides a "search ads" service and links to third-party commercial websites.

For those reasons, the Panel finds that neither of the Respondents have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent Ryan G Foo, PPA Media Services registered and is using the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) is conjunctive and requires that both bad faith registration and bad faith use be proved.

"Bad faith" within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each of the following circumstances are evidence that a registrant has registered and is using a domain name in bad faith:

(i) circumstances indicating that the registrant 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant'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 registrant's website or location or of a product or service on the registrant's website or location.

The Policy expressly states that those circumstances are nonexhaustive.

To establish that a registrant registered and is using a domain name in bad faith, a complainant need only establish one of the four non-exhaustive criteria set forth in Policy paragraph 4(b).

Policy paragraph 4(b)(iv) applies if the Complainant establishes that the Respondent Ryan G Foo, PPA Media Services registered and is using the disputed domain name to confuse and divert Internet traffic to the Respondent's website for commercial gain. There is no direct evidence that the Respondent Ryan G Foo, PPA Media Services knew of the Complainant or its trademarks, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the knowledge and intention of the Respondent Ryan G Foo, PPA Media Services may be determined by common sense inferences from circumstantial evidence.

The Panel finds that the Respondent Ryan G Foo, PPA Media Services knew of the Complainant and its trademarks, and registered and is using the disputed domain name to confuse and divert Internet traffic to the Respondent's website, based on the following circumstances: (a) the Complainant's ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks are distinctive and specific to the Complainant in connection with financial services, and have been used for many years (the ZIONS trademark has been used for over 100 years); (b) the disputed domain name is a deliberate misspelling of the Complainant's ZIONS BANK and ZIONSBANK.COM trademarks and the Complainant's <zionsbank.com> domain name that is calculated to capitalize on Internet users' typographical errors; (c) there is no apparent connection or relationship between the disputed domain name and the Respondent Ryan G Foo, PPA Media Services or the business, wares or services of the Respondent Ryan G Foo, PPA Media Services; (d) the Respondent Ryan G Foo, PPA Media Services uses the disputed domain name for a website that provides a search engine that allows users to "search ads" and a list of "Related Links" with topics such as "bank loans", "investment calculator", "Internet banking" and "best mortgage rates"; (e) there is no apparent legitimate justification for the registration and use of the disputed domain name by the Respondent Ryan G Foo, PPA Media Services; and (f) the Respondent Ryan G Foo, PPA Media Services has not denied knowledge of the Complainant or its trademarks. In addition, the Panel draws an adverse inference from failure by the Respondent Ryan G Foo, PPA Media Services to provide any explanation or rationale for the registration or use of the disputed domain name.

The Panel also finds that the registration and use of the disputed domain name by the Respondent Ryan G Foo, PPA Media Services results in commercial gain to the Respondent. It is well known that many websites generate advertising revenue by directing traffic to other websites. Based on the content of the Respondent's website, and in the absence of any explanation by the Respondent, the Panel finds that the website generates revenue for the Respondent Ryan G Foo, PPA Media Services by providing links to other commercial websites. See WIPO Overview 2.0, section 3.8.

The practice of registering domain names based on misspellings of well-known trademarks for the purpose of diverting users to an unrelated website that generates advertising revenue for the registrant has been described as "classic bad faith". See Loris Azzaro B.V. v. Fraud Fighters, Inc. (DOMAIN FOR SALE), WIPO Case No. D2013-2248; easyGroup IP Licensing Limited v. Domain Admin, Privacy Protection Service Inc., Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc., WIPO Case No. D2014-0387; Williams-Sonoma, Inc. v. Fundacion Private Whois c/o Domain Administrator, WIPO Case No. D2013-1957; Groupon Inc. v. Xiangsheng Zhou, feng zhou, WIPO Case No. D2014-1609; Twitter, Inc. v. Domain Admin, Whois Protection / Accueil des Solutions, Inc, WIPO Case No. D2014-0645 ; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; and Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517;

For those reasons, and pursuant to Policy paragraph 4(b)(iv), the Panel finds that the Respondent Ryan G Foo, PPA Media Services, the actual registrant of the disputed domain name, registered and is using the disputed domain name in bad faith to confuse and divert Internet users to the Respondent's website for commercial gain.

In the circumstances, the Panel need not consider whether any of Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith.

The Panel also notes that its findings are consistent with similar findings in Zions Bancorporation v. Ryan G Foo / PPA Media Services, WIPO Case No. D2014-1797, a case involving the bad faith registration and use of the domain name <zionzbank.com> by the Respondent Ryan G Foo, PPA Media Services.

7. Decision

The Complainant has established each of the three requirements set forth in Policy paragraph 4(a): (i) the disputed domain name is identical or confusingly similar to the Complainant's ZIONS, ZIONS BANK and ZIONSBANK.COM trademarks; (ii) the Respondents do not have any rights to or legitimate interests in the disputed domain name; and (iii) the Respondent Ryan G Foo, PPA Media Services, the actual registrant of the disputed domain name, registered and is using the disputed domain name in bad faith.

For those reasons, in accordance with Policy paragraph 4(i) and Rules paragraph 15, the Panel orders that the disputed domain name <zionsbanl.com> be transferred to the Complainant.

Bradley J. Freedman
Sole Panelist
Dated: April 9, 2015