WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zions Bancorporation, Inc. v. PrivacyProtect.org / ICS INC.
Case No. D2012-2326
1. The Parties
The Complainant is Zions Bancorporation, Inc. of Salt Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America.
The Respondents are PrivacyProtect.org of Nobby Beach, Queensland, Australia and ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“Respondent”).
2. The Domain Name and Registrar
The disputed domain name <zionsbankd.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 November 26, 2012. On November 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2012, the Registrar transmitted by email to the Center its verification response disclosing 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 December 13, 2012 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 amended Complaint on December 15, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2013.
The Center appointed James Bridgeman as the sole panelist in this matter on January 16, 2013. 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 engaged in financial services industry and submits that it owns and uses the following registered service marks in it the course of its banking and financial services business:
- U.S. Trademark ZIONS, Registration No. 2,380,325, registered on August 29, 2000 for specified financial services in international class 36 claiming first use in commerce on May 13, 1891;
- U.S. Trademark ZIONS BANK, Registration No. 2,381,006, registered on August 29, 2000 for specified financial services in international class 36 claiming first use in commerce on July 12, 1992;
- U.S. Trademark ZIONSBANK.COM, Registration No. 2,531,436, registered on January 22, 2002 for “financial services namely banking, in class 36” claiming first use in commerce on May 7, 1995.
In an annex to the Complaint, the Complainant has furnished a copy of the registration certificate of the United States Patent and Trademark Office to certify its ownership in respect of each of the above service mark registrations.
The Complainant is the owner of the domain name <zionsbank.com> which it registered in 1995.
The Respondent used a privacy service and has failed to respond to the Complaint. The only information available about the Respondent therefore is that provided by the Complainant in the Complaint and the contact details in the WhoIs database and as confirmed by the Registrar.
According to the WhoIs database the disputed domain name <zionsbankd.com> was registered on November 4, 2012.
5. Parties’ Contentions
The Complainant requests this Panel to direct that the disputed domain name be transferred to the Complainant.
The Complainant relies on its ownership of, and rights in the above registered service marks in connection with the provision of financial services. The Complainant asserts that in 1995 the Complainant registered and has since used the domain name <zionsbank.com> which resolves to its website on which it advertises and offers its banking and financial services.
The Complainant submits that the disputed domain name <zionsbankd.com> is confusingly similar to the Complainant’s registered service marks ZIONS BANK, ZIONSBANK.COM and ZIONS. The Complainant argues that the additional letter "d" does not distinguish the disputed domain name <zionsbankd.com> from the Complainant's registered service mark.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant submits that its rights in the above-listed registered service marks pre-date the registration of the disputed domain name on November 5, 2012.
The Complainant asserts that the Respondent is not a licensee of the Complainant's trademarks, and has not otherwise obtained authorization to use Complainant's marks.
The Complainant further submits that the Respondent is not using the disputed domain name as part of a bona fide offering of goods or services. Instead, it argues that the Respondent appears to be using the disputed domain name to direct consumers with various banking related or other search queries to the websites of third parties.
In an annex to the Complaint, the Complainant has furnished a print out of a page from the website to which the disputed domain name resolves and submits that the Respondent has posted links on the website to third party websites which provide services that are identical or similar to the type of services offered by the Complainant under its registered service marks. The Complainant submits that the Respondent’s use of the Complainant's marks in the disputed domain name is therefore misleading and may divert consumers away from the Complainant's official and authorized website and there is a danger that the disputed domain name may be used in connection with various phishing and fraudulent activities.
Furthermore, the Complainant argues that the Respondent's use of the disputed domain name may tarnish the Complainant's above-mentioned ZIONS BANK, ZIONSBANK, and ZIONS service marks.
The Complainant submits that the Respondent’s use of the Complainant’s marks in the disputed domain name indicates that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant.
Furthermore the Complainant submits that the Respondent has also displayed marks containing the marks ZIONS BANK and ZIONS on the website associated with the disputed domain name.
Furthermore, the Complainant submits that by using the Complainant's marks in the disputed domain name and on the associated website, the Respondent is intentionally creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its ownership of the registered service marks ZIONS, ZIONS BANK and ZIONSBANK.COM.
The Complainant asserts that it has used the above service marks but has not furnished any evidence of such use. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the consensus view of panelists is that “[i]f the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) …and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.”
Having compared the disputed domain name and the Complainant’s registered service marks, this Panel finds that the word “zions” is the dominant and distinctive element in each of the Complainant’s registered trademarks and in the disputed domain name <zionsbankd.com> for purposes of this UDRP proceeding.
This Panel finds that the disputed domain name is not only confusingly similar to the Complainant’s marks it is almost identical to the ZIONS BANK mark, having only one difference namely the addition of the letter “d” as the Complainant has submitted.
This Panel finds therefore that the disputed domain name is confusingly similar to the service marks ZIONS, ZIONS BANK and ZIONSBANK.COM in which the Complainant has rights.
The Complainant has therefore succeeded in the first element of the test in paragraph 4 of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has asserted that the Respondent has never been granted any rights to use the service marks ZIONS, ZIONS BANK and ZIONSBANK.COM.
On the evidence, the Respondent is using the disputed domain name as the address of a website that provides onwards links to what appear to be third party websites. It is well accepted under the Policy that the Respondent does not acquire rights or legitimate interests in the domain name merely by such use. According to the WIPO Overview 2.0, “[t]he Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" …or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
The use of the word “bank” in the disputed domain name clearly refers to activity in the financial services business. Furthermore, this Panel notes the distinctiveness of the combination of the words “zions” and “bank” and finds that it is improbable under the circumstances that the Respondent has been using the disputed domain name for any legitimate purpose.
In the circumstances the burden of production of evidence shifts to the Respondent and as no Response or other communication has been received by the Center, the Respondent has failed to discharge the burden.
The Complainant has therefore succeeded in the second element of the test in paragraph 4 of the Policy also.
C. Registered and Used in Bad Faith
On the evidence before this Panel, the disputed domain name has been used to resolve to a website offering links to third party websites offering services in competition with the Complainant.
While the Complainant has not furnished any evidence of the extent of its reputation and goodwill, it has registered service mark rights in the United States of America since August 29, 2000 for specified financial services in international class 36 and has claimed first use in commerce on May 13, 1891 for the ZION mark.
The domain name consists of the two elements “zions” and “bankd”. While “bankd” has no apparent meaning, in the context of the present domain name registration and in combination with the word “zion”, it is clearly a mis-typing of the word “bank”. The distinctive combination of the terms “zion”, “bank” and “d” allows this Panel to find that on the balance of probabilities the registrant was aware of the Complainant’s business when the disputed domain name was registered and chose the domain name because of its confusing similarity with the Complainant’s trademark.
Furthermore on the balance of probabilities, any search carried out when the disputed domain name <zionsbankd.com> was being registered would undoubtedly have disclosed the Complainant’s registration of the almost identical domain name <zionsbank.com> which was registered in 1995.
Because of the similarity of the disputed domain name and the Complainant’s earlier registered domain name <zionsbank.com> taken together with the misspelling of the word “bank” by the addition of the letter “d” to form “bankd”, this Panel finds on the balance of probabilities that the Respondent has engaged in typosquatting.
This Panel is fortified in finding that the Respondent is engaged in typosquatting, because the Respondent has used the disputed domain name as a vehicle to direct traffic to third party websites that are competing with the Complainant.
This Panel finds that on the balance of probabilities the disputed domain name was chosen, registered in bad faith and has been subsequently used in bad faith in order to take predatory advantage of the Complainant’s goodwill in the above registered service marks.
The Complainant has therefore succeeded in all three elements of the test in paragraph 4 of the Policy and is entitled to succeed in this Complaint.
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 <zionsbankd.com> be transferred to the Complainant.
Date: January 29, 2013