WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zions Bancorporation v. James Murphy
Case No. D2014-1722
1. The Parties
The Complainant is Zions Bancorporation, Salt Lake City, Utah, United States of America ("US"), represented by Callister Nebeker & McCullough, US.
The Respondent is James Murphy, Sorrento Perth, Western Australia, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <zionsbank.xyz> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2014. On October 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 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.
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 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2014. The Response was filed with the Center on October 28, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on November 5, 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, incorporated in the US, has supplied banking and financial services in the US under the name "Zions Bank" since the early 1990s. Since 1995, the Complainant has advertised and offered its services via a website at "www.zionsbank.com".
The Complainant owns the following US registered trade marks: no. 2,380,325 for ZIONS registered August 29, 2000, no. 2,531,436 for ZIONSBANK.COM registered January 22, 2002 and no. 2,381,006 for no. ZIONS BANK registered August 29, 2006, all in class 36.
The Respondent registered the disputed domain name on September 16, 2014.
As of September 25, 2014, the disputed domain name resolved to a GoDaddy parking page with financial services and other links.
5. Parties' Contentions
In summary, the Complainant contends as follows:
Identical or Confusingly Similar
The disputed domain name is highly similar or identical to the Complainant's trade marks. The Respondent is intentionally using the dominant portion of the Complainant's marks in the disputed domain name in order to create a likelihood of confusion. The Top Level Domain name suffix ".xyz" does not distinguish the disputed domain name from the Complainant's trade marks.
Rights or Legitimate Interests
The Respondent is not a licensee of the Complainant's trade marks and has not otherwise obtained authorization to use the Complainant's marks. The Respondent is not using the disputed domain name as part of a bona fide offering of goods or services or for a legitimate noncommercial use.
Registered and Used in Bad Faith
The disputed domain name was registered primarily to disrupt the Complainant's business. While there is insufficient information to determine if the Respondent is a competitor of the Complainant, the Respondent is clearly trying to divert the Complainant's customers to its website by using the dominant portion of the Complainant's marks.
The website provides links to financial services which are identical or similar to those offered by the Complainant and is likely to confuse customers.
Because of its similarity to the Complainant's name, the Respondent may also use the website in connection with phishing and similar fraudulent activities.
The Respondent's activities may tarnish the Complainant's marks.
In summary, the Respondent contends as follows:
Identical or Confusingly Similar
The Complainant has no registered trade mark for "zionsbank.xyz".
The disputed domain name is not confusingly similar to the Complainant's trade marks. Nor does it infringe those marks.
The Complainant's marks do not contain the combination "xyz", or the individual letters "x" and "y". The Complainant's trade marks are in capitals whereas the disputed domain name is in small case.
The disputed domain name is completely different in structure to the Complainant's marks and so the Respondent denies that the disputed domain name uses the "dominant portion" of the Complainant's marks.
The Complainant's three trade marks are different to each other.
There are numerous other registered trade marks including the word "Zion", which has been in existence since 630 – 540 BCE and is also associated with multiple religious groups and movements as well as being used in many place names. Therefore it cannot be said that this term uniquely distinguishes the Complainant and there are no grounds for the Complainant to claim that the term is the dominant portion of the Complainant's marks.
The Respondent has not intentionally created a likelihood of confusion with the Complainant's mark.
The Respondent does not operate a business competing with the Complainant and has no intention of doing so. The Respondent has not advertised the intended purpose of the disputed domain name or offered any services that could be associated with the Complainant.
Rights or Legitimate Interests
The Respondent has no association with the Complainant. The Respondent had not begun to use the disputed domain name prior to the date of the Complaint as the disputed domain name had only been registered shortly beforehand. The Respondent has simply placed the disputed domain name "on hold".
The Respondent registered the disputed domain name legitimately in accordance with its own plans which involve activities which are entirely different to the type of business conducted by the Complainant.
The disputed domain name does not infringe the Complainant's trade marks. The Complainant's trade marks do not give it the right to interfere with the Respondent's right to the disputed domain name.
The Respondent has not advertised any service similar to those of the Complainant and does not intend to compete with the Complainant.
The Complainant's assertions are conjecture. The Complainant does not know the Respondent's intentions for the disputed domain name.
Registered and Used in Bad Faith
The disputed domain name was not registered in bad faith as explained above.
The website at the disputed domain name is operated by the domain registration company. The page is parked for free and contains no content from the Respondent. The web page makes no reference to the Complainant's trade marks. Accordingly, the website does not create a likelihood of confusion with the Complainant. The page is not misleading.
As mentioned above, the Respondent has not used the Complainant's marks and has no intention of doing so. It is not competing with the Complainant.
Previous UDRP complaints involving the Complainant are irrelevant.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has right in the mark ZIONS BANK by reason of its registered trade mark for that term.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Leaving aside the domain suffix for the moment, the only difference between the trade mark and the disputed domain name is the fact that there is a space between the two words in the trade mark whereas there is no space between those words in the disputed domain name. This makes no difference whatever; the trade mark is very easily recognizable within the disputed domain name. Indeed the domain name and trade mark are essentially the same thing.
It is not correct, as the Respondent claims that the disputed domain name is "lower case". Domain names are not case-specific but, even if they were, any difference in letter case would not remotely prevent the trade mark from being easily recognizable within the disputed domain name.
Turning to the Top-Level Domain name suffix, traditionally under the UDRP this has been disregarded when comparing disputed domain name and trade mark (except where the suffix forms part of the trade mark) – see paragraph 1.2 of WIPO Overview 2.0. If one were to disregard the suffix in this case, then the disputed domain name is identical or at least confusingly similar to the Complainant's trade mark.
The extent to which (if it all), UDRP panels will take account of top-level suffixes in the case of "new gTLDs" remains to be seen. The issue was addressed in the first UDRP case involving a new gTLD. In Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206, where the panel stated:
"The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach. However, the Panel considers that it is not necessary to do so in the present case. The test in paragraph 4(a)(i) of the Policy is 'a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint' (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). There is no doubt in the Panel's mind that the Complainant's case on this element of the Policy, with which the Respondent does not take issue, more than meets this threshold."
Here, the Respondent essentially claims that the suffix should be taken into account, observing that the trade mark does not include the term "xyz". However, in the Panel's view, even if this suffix is taken into account, it simply comprises an additional anodyne term which is far from sufficient to prevent threshold Internet user confusion. It does not in any way distinguish the disputed domain name from the trade mark, which remains by far the dominant part of the disputed domain name.
Nor does it make any difference, as the Respondent claims, that there are many other trade marks including the word "Zion" or that "Zion" itself is a common term. At this point, the Panel is solely concerned with a comparison between the trade mark and the disputed domain name in order to determine likelihood of Internet user confusion.
For the above reasons, the Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, it is not in dispute that the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which demonstrate rights or legitimate interests. Paragraph 4(c)(i) refers to "use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services" before the respondent is given notice of a dispute.
The Respondent admits that that the only use of the disputed domain name before the complaint was filed was as a registrar parking page. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
"Panels have generally recognized that use of a domain name to post parking and parking pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fideoffering of goods or services" … 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."
In this case, a majority of the advertising links are to financial services, which are competitive with the services of the Complainant.
The Respondent claims that it registered the disputed domain name legitimately in accordance with its own plans which involve activities which are entirely different to the type of business conducted by the Complainant but that the Respondent has not yet had an opportunity to start those activities given that the Complaint was filed soon after registration of the disputed domain name. However, the Respondent has not seen fit to disclose the details of those plans, let alone supply evidence of "demonstrable preparations" as required by paragraph 4(c)(i). The Respondent's statement that it does not intend to compete with the Complainant is far from sufficient.
Accordingly there is no evidence of use or demonstrable preparations to use the disputed domain name for a bona fideoffering of goods or services for the purposes of paragraph 4(c)(i).
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Respondent asserts that the Complainant's assertions are conjecture as the Complainant does not know the Respondent's intentions for the disputed domain name. Such a statement is in fact unhelpful to the Respondent's case because, as mentioned above, it is not accompanied by disclosure of a plausible reason for selection of the disputed domain name. This omission raises the inference that the disputed domain name was in fact registered to target the Complainant in some way. Indeed it is difficult to see what genuine purpose the Respondent might have had for the disputed domain name.
The Panel notes that the Respondent has not denied awareness of the Complainant at the date of registration of the disputed domain name.
Furthermore, while, as the Respondent says, the term "Zion" is undoubtedly a common one, the same cannot be said of the combined term "Zions Bank". The Respondent has provided no reason for the Panel to think that this combined term could denote anyone other than the Complainant.
The Panel therefore considers that the disputed domain name has been registered in bad faith.
As to use in bad faith, the Respondent seeks to distance itself from the registrar parking page. However, the Respondent is ultimately responsible for the use to which the disputed domain name is put. The fact that a registrar has provided a parking page does not absolve the Respondent from liability. See, e.g., Missoni S.p.A v T.N.T. TerrificNTerry Inc., WIPO Case No. DWS2008-2003 and Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright, WIPO Case No. D2007-0267.
Furthermore, it is irrelevant whether or not the Respondent itself is in fact making any commercial gain from the parking page. UDRP panels have held that paragraph 4(b)(iv) of the Policy does not require the owner of the domain name to be the entity that commercially gains from the diversion (see, e.g., Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857).
"Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP). … Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant's trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present."
The Respondent insists that the parking page makes no specific reference to the Complainant's trade marks and is therefore not misleading. However, the Respondent used the disputed domain name to create at least "initial interest confusion" on the part of internet users seeking the Complainant. It makes no difference that at some point users arriving at the Respondent's site might realize that the site is not connected with the Complainant. See, e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 and Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark.
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, <zionsbank.xyz> be transferred to the Complainant.
Date: November 19, 2014