WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A., dba Zions First National Bank v. Oneandone Private Registration, 1&1 Internet Inc / John Mike
Case No. D2017-0137
1. The Parties
The Complainant is ZB, N.A., dba Zions First National Bank of Salt Lake City, United States of America ("USA" or "United States"), represented by John Rees Law, PLLC, USA.
The Respondent is Oneandone Private Registration, 1&1 Internet Inc of Chesterbrook, USA / John Mike of Karachi, Pakistan, represented by Marben Luis Tan, USA.
2. The Domain Name and Registrar
The disputed domain name, <zionvpn.com> (the "Domain Name"), is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 24, 2017. On January 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 26, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 26, 2017 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 January 28, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2017. The Response was filed with the Center on February 7, 2017.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 22, 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 Respondent sent several communications to the Center on February 2, 2017, February 5, 2017, February 7, 2017, February 11, 2017 and February 14, 2017. Certain of those emails appear to be communications between the Respondent and his representative, which add nothing to the substance of the case and which, in the view of the Panel, ought not to have been copied to the Center. The Panel ignores them. Others relate to another proceeding involving the domain name, <zionwealth.com>, held in the name of someone other than the Respondent. Attempts were being made by one of the representatives to have the two cases consolidated. That correspondence came to nothing. Three others relate to the Domain Name, and while they add little to the substance of the Response are nonetheless set out verbatim in section 5B below.
The amendment to the Complaint stemmed from the fact that the underlying registrant, John Mike, had availed himself of a privacy service. For the purposes of this decision all references to the Respondent are references to John Mike.
4. Factual Background
The Complainant and its predecessors have been doing business under the name of "Zions First National Bank" in the field of financial services since June 12, 1890. Further, it claims to have been using its ZIONS trade mark since 1891 and its ZIONS BANK trade mark since at least 1992. The Complainant is the registered proprietor of several United States trade mark registrations of or including the name "Zions". The registrations upon which the Complainant relies are all for financial services in class 36 and are as follows:
Registration No. 2,380,325 ZIONS (word) registered August 29, 2000
Registration No. 2,381,006 ZIONS BANK (words) registered August 29, 2000
Registration No. 2,531,436 ZIONSBANK.COM (words) registered January 22, 2002
The Complainant has an operational website connected to its domain name, <zionsbank.com>, a domain name which it registered on July 6, 1995.
The Domain Name was registered on January 6, 2017 and is connected to a parking page of the Registrar. The parking page features advertising links all of which relate to VPNs (Virtual Private Networks).
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its above-mentioned registered trade marks; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Respondent registered the Domain Name in bad faith.
The Respondent denies the Complainant's contentions.
The Respondent contends that the omission of the "s" in the Domain Name, combined with the addition of the letters "vpn" are material differences when it comes to assessing confusing similarity for the purposes of paragraph 4(a)(i) of the Policy. The Respondent contends that there is no risk of confusion.
The Respondent contends that when he registered the Domain Name he was unaware of the existence of the Complainant and, prior to learning of the Complaint, had already made plans for an online VPN proxy service for Internet security and privacy, a business project in which he had already invested USD 35,000. When registering the Domain Name, the Respondent also registered the domain name, <zionproxy.com>. The Respondent has not yet had time to develop a website. The Registrar's parking page has generated no traffic and neither the parking page nor the Respondent's plans for his business bear any relation to the Complainant's field of activity, banking.
At all times his intentions have been good faith intentions to develop a VPN proxy service through the Domain Name and his <zionproxy.com> domain name and without any knowledge of the Complainant. He selected the name "Zion" "for the reason of his Religious Character".
He claims that he was planning "a partnership with his friend's website, <ziontechgroup.com>", which also uses the Zion name.
On February 2, 2017 the Respondent emailed the Center as follows:
"sir i am owner of domain zionvpn.com, i received emails from wipo.int that there is complaint against my domain zionvpn.com UDRP case D2017-0137
i am not sure who filled this case & why? i think this case is by 'Zions Bank', sir i am legally owner of this domain, and i never had used this domain in a way that is against LAW or someone others intellectual property, this domain means 'Zion VPN' & it is in no way related to some Bank & even it does not contain word 'Zions' it contains 'Zion'. then why you filled case against my domain? how you can snatch my domain, my property from me without any SOLID reason? i need help, i dont want to lose my domains. plz tell me what can i do to make my domain Safe. Thanks for help".
On February 5, 2017 the Respondent's representative emailed the Center as follows:
"In view of the complaint docketed under case no: d2017-0137) filed at wipo, respondent, through counsel, hereby submits unto the honorable facilitator and panel assigned arbitrator, our defense in response to this instant complaint, deny, refute, and challenge the
Complainant's allegations in fact and in law;
Whereas, defense is open for any possible settlement initiated by complainant before the proceedings starts to commence;
Whereas, the respondent reserves his right not to allow any proposals, negotiation, offer that intends to acquire, transfer, or sale of the domain www.zionvpn.com as it is to be used as planned to cater and to showcase softwares relating to vpn and proxy Internet security;
Thus if any party of this regard would insist of anything that is described above mention would only entertain parties or any other person or entity showing interest if the offer is no less than 500,000$ or 1000000$ for the domain name zionvpn.com and zionproxy.com;
To this regard, counsel hereby attached respondents defense in response to this instant case."
On February 7, 2017 the Respondent's representative emailed the Center in the following terms:
"Please acknowledge Respondent's Response attached file.
Respondent herein, is not open for any settlement regarding the domain for he does not intend to sell it, he was about to launch an ONLINE VPN Security Software when this was Activated.
This case has caused Respondent dismay for they were already in the final phase of preparation before this complaint was filed."
On February 11, 2017 (and still within the time limit for a Response) the Respondent's representative sent to the Center supplemental evidence purporting to support the Respondent's claim under paragraph 4(a)(ii) of the Policy. This evidence is discussed in section 6.C below.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent 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.
Moreover, in writing his decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
B. Identical or Confusingly Similar
Under this element of the Policy the Complainant is first required to prove the existence of trade mark rights and then to establish to the satisfaction of the Panel that the Domain Name is identical or confusingly similar to the Complainant's trade mark in which the Complainant has rights.
It is well-established that for the purposes of this assessment under paragraph 4(a)(i) of the Policy the jurisdiction in which the Complainant has claimed trade mark rights is an irrelevant consideration as are the categories of goods and services covered by the Complainant's trade mark rights. Accordingly, the fact that the parties may operate in different jurisdictions and in different industries is not a matter that the Panel takes into consideration under this element of the Policy, although it may be of relevance to the issues to be addressed under the second and third elements of the Policy. The test of identity and confusing similarity as established in UDRP precedent typically involves a simple side-by-side comparison of the Domain Name and the Complainant's trade mark.
Here the key element of the Complainant's trade marks is the word "Zions", which is not a word that features (as such) in the Domain Name; thus the two are not identical and the issue is as to whether they are confusingly similar. An accepted body of UDRP caselaw has developed, which clearly favours the view that, in general, the first element, a threshold test, is met if the domain name in issue features within it in some form a recognizable reference to the letter string of the complainant's trade mark. Appreciating that this view has achieved consensus status, the Panel adopts it in the interest of consistency. An advantage of this approach is that it affords a full opportunity to determine the merits of a case under the UDRP's second and third elements, the latter of which is often seen as the core part of UDRP assessment.
The three trade marks upon which the Complainant relies are (i) ZIONS, which differs from the Domain Name by the addition of the "s" and the absence of "vpn.com"; (ii) ZIONS BANK, which differs from the Domain Name by the addition of the "s" and "bank" and the absence of "vpn.com"; and (iii) ZIONSBANK.COM which differs by the addition of "sbank" and the absence of "vpn".
Generic Top-Level Domain ("gTLD") identifiers are commonly ignored for the purpose of the assessment under this element of the Policy where the gTLD identifier serves no more than a technical purpose. Accordingly, for the assessments involving ZIONS and ZIONS BANK, the Panel ignores the ".com" gTLD identifier in the Domain Name. In the case of ZIONSBANK.COM, however, the gTLD identifier is an integral part of the trade mark and the Panel regards it as appropriate that the comparison should be between ZIONSBANK.COM on the one hand and <zionvpn.com> on the other.
On the basis that the present test is a threshold test and "zion" is a prominent element of the Domain Name and appears in all three of the Complainant's trade marks, the Panel finds that the Complainant has met the test under the first element.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name for the following 6 reasons: (1) the Complainant has been using the ZIONS trade mark since 1891; (2) the Complainant cannot trace any past use of (or demonstrable preparations to use) the Domain Name by the Respondent in connection with a bona fide offering of goods or services; (3) use of the Domain Name to link to a parking page does not of itself confer rights or legitimate interests; (4) insofar as the Complainant is aware the Respondent is not commonly known by the Domain Name; (5) the Respondent is not making a legitimate noncommercial or fair use of the Domain Name; (6) the Complainant has not granted the Respondent any licence to use the Complainant's trade mark.
In response the Respondent asserts that he was unaware of the Complainant until he was informed of the Complaint and that he registered the Domain Name for a bona fide software service offering relating to Virtual Private Networks and Internet security. He further asserts that although he has not yet had time to develop his website, he has already invested USD 35,000 in the project.
If he had been able to support this assertion with sufficient documentary evidence in support, this would have constituted a full defence to the Complaint under paragraph 4(c)(i) of the Policy. The Respondent has produced in evidence four so-called "Advance Receipts" for the sums of PKR 1,500,000, PKR1,500,000, PKR 1,500,000 and PKR 600,000, respectively. All are dated January 14, 2017 and are for work to be done in the six months from January 14, 2017 to July 14, 2017. The providers for each advance are named (a Mr. Ali and the Respondent), the recipients are named and the receipts have all been signed and witnessed. In addition each receipt specifies work consistent with the Respondent's stated aim of developing software for his business associated with the Domain Name and his other domain name, <zionproxy.com>. The problem with this evidence is that it is all documentation emanating from the Respondent and could readily have been created simply to defeat the Complaint.
His unsupported claim that he was planning a partnership with a friend who has a website connected to the domain name, <ziontechgroup.com> falls into the same category.
However, in questioning the authenticity of this evidence, the Panel is certainly not making any finding to the effect that it is false. There is no evidence before the Panel to support such a finding. The Panel simply observes that the Respondent's contentions lack independently verifiable supporting evidence. Accordingly, the Panel prefers instead to deal with this case under the next element.
D. Registered and Used in Bad Faith
The Complainant's contentions under this element of the Policy are somewhat scattergun in style, stemming largely from the fact that it has no hard evidence of any kind against the Respondent.
The Complainant relies upon the confusing similarity between the Domain Name and the Complainant's trade marks. It contends: "The use of virtually identical or similar mark in the Domain Name indicates that the 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 Complainant's federally registered trade marks". The Panel however takes a different view of the likelihood of such confusion; moreover, it is to be noted that the Complaint does not include any evidence to suggest why the Complainant might have come across the Complainant. For example, the Complaint contains no evidence as to the extent (financial or geographical) of the Complainant's trade.1
The Complainant asserts without any supporting evidence: "The Respondent is clearly trying to exploit the goodwill of Complainant and its trademarks by diverting customers of Complainant from Complainant's website to Respondent's website for commercial gain or malicious purposes by creating a likelihood of confusion with Complainants trademarks". While the Panel has some sympathy with the Complainant in that it had no information of any kind on the Respondent, the use of the word "clearly" in the above quote is the Panel's view over the top. The Complainant might have been in a better position to make such a claim if it had attempted to approach the Respondent in advance by way of a pre-Complaint communication and then received an unhelpful response.
The Complainant asserts that the Respondent should have known of the existence of the Complainant's trade mark on the basis that it was well-known or in wide use at the time the Domain Name was registered. However, there is nothing before the Panel to enable the Panel to assess the fame or scope of use of the Complainant's trade marks.
The Complainant asserts that "the Respondent's use of Complainant's mark may tarnish Complainant's mark", but fails to deal with the fact that the Respondent is not using the Complainant's mark. Non-use or passive use can certainly constitute bad faith use, but there has to be evidence to support the contention. A problem for the Complainant is that the word "Zion", which appears in the Domain Name, also happens to be a well-known term to which the Complainant cannot claim exclusivity.
The Complainant asserts that the use of a privacy service in combination with the other matters raised above is indicative of bad faith. The Panel has no information on how the Domain Name came to be connected to a parking page of the Registrar, but is aware that that is often the default position on registration of a domain name prior to connecting it to an operational website. The Respondent is of course responsible for how his Domain Name is being used, but the use to which it has been put has no obvious connection with the Complainant and given that all the links on that parking page are to VPN-related websites, it appears to the Panel that the VPN element of the Domain Name may in fact be a key element both for Internet users and search engines which undermines the Complainant's assertions as to confusion.
Finally, the Complainant relies upon its past success in UDRP domain name proceedings, citing some 27 cases involving a much larger number of domain names. The Panel has found it instructive reviewing the Domain Names in issue in those cases targeting the Complainant's ZIONS trade mark. They are: <zonsbank.com>, <zionsbak.com>, <zionsank.com>, <zionsbanl.com>, <zionzbank.com>, <zoinsbank.com>, <zionsbamk.com>, <zionsfirstnationalbank.com>, <zionsbznk.com>, <ziosbank.com>, <zionsfirstnationalbank.xyz>, <zionsinsurance.xyz>, <zionsbank.lol>, <zionsbank.tech>, <zionmortgages.xyz>, <zionscreditsolutions.xyz>, <zionsvank.com> and <zionbcnk.com>. Without exception they are domain names, which are clearly targeting the Complainant. Most are simple typosquatting cases and those that are not indicate financial services. All bar two emphasise the significance of the "s" (or typosquatting "z") in the Complainant's trade mark. They are all in a very different category from the Domain Name.
In the result the Panel finds that there is nothing in the Complaint, which justifies rejecting the Respondent's claim to have been unaware of the existence of the Complainant when he registered the Domain Name. If he was unaware of the Complainant when he registered the Domain Name and had no reason to have known of it, he cannot have registered the Domain Name in bad faith. If the fame of the Complainant is such that the Respondent ought to have been aware of it, the evidence should have supported the claim.
The evidence as to the Respondent's use of the Domain Name (see section 4 above) was filed by the Complainant and there is nothing about that use indicating any targeting of the Complainant.
The Complainant has failed to persuade the Panel that the Domain Name was registered in bad faith.
For completeness the Panel addresses the matter of the offer for sale of 500,000$ to 1,000,000$ mentioned in the Respondent's representative's email to the Center of February 5, 2017 (see section 5B above), which is said to be the price range that the Respondent would accept for the Domain Name and his other domain name, <zionproxy.com>. While seeking excessive sums of money for transfer of a domain name can be indicative of bad faith registration and use (paragraph 4(b)(i) of the Policy), this was not a demand made directly of the Complainant. It was in an email to the Center sent after the Complaint had been launched and, in context, appears to the Panel to have been a hostile reaction to what the Respondent believed to be an unfounded complaint. Two days later, in the email of February 7, 2017 the offer (such as it was) was retracted. The Panel does not regard the content of the February 5, 2017 email to be of any significance.
E. Reverse Domain Name Hijacking
In this case the Respondent has not requested a finding of Reverse Domain Name Hijacking, but where a complaint fails, it will often be a matter for consideration irrespective of whether or not such a finding has been sought by the respondent.
As this Panel stated in Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603:
"For a finding of Reverse Domain Name Hijacking ('RDNH') it is not necessary that the Respondent should have sought such a finding. As can be seen from paragraph 15(e) of the Rules, if the Panel finds that the Complaint was brought in bad faith, he is under an obligation to so declare in his decision. See Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 ('The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.').
For a finding under this head the Panel must conclude that the Complaint was brought in bad faith whether to deprive the Respondent of the Domain Name or to harass the Respondent or for some other reason."
While the Panel is of the view that the Complaint was misconceived, the Panel is nonetheless satisfied that in bringing the Complaint the Complainant was acting in good faith, genuinely believing that it was entitled to succeed.
For the foregoing reasons, the Complaint is denied.
Date: February 26, 2017
1 The Panel has visited the Complainant's website at "www.zionsbank.com" and accepts that Zions First National Bank is likely to be a substantial bank in its area of the USA, but the Panel could find nothing sufficient to meet the scope of the Complainant's claim to the breadth of its goodwill.