WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zions Bancorporation v. Ryan G Foo / PPA Media Services
Case No. D2014-1797
1. The Parties
The Complainant is Zions Bancorporation of Salt Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America.
The Respondent is Ryan G Foo / PPA Media Services, Santiago de Chile, Chile.
2. The Domain Name and Registrar
The disputed domain name <zionzbank.com> is registered with Internet.bs Corp. (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 17, 2014, 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 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 23, 2014.
The Center verified that the Complaint, as amended, 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 Reynaldo Urtiaga Escobar as the sole panelist in this matter on December 1, 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.
The proceedings were conducted in English since that is the language of the disputed domain name's registration agreement, as confirmed by the Registrar.
4. Factual Background
The Complainant has provided banking and financial services in the US under the name "Zions Bank" since the early 1990s. As of 1995, the Complainant has advertised and offered its services online at "www.zionsbank.com".
The Complainant owns the following US registered service marks: Nº 2,380,325 for ZIONS and Nº 2,381,006 for ZIONS BANK, both registered August 29, 2000; and Nº 2,531,436 for ZIONSBANK.COM registered January 22, 2002, all in international class 36.
According to the Registrar's verification response, the disputed domain name was registered on November 26, 2005.
The disputed domain name currently resolves to a website showing a list of pay-per-click "PPC" links exclusively related to banking products and services.
5. Parties' Contentions
In summary, the Complainant contends as follows:
i. The disputed domain name contains a name that is highly similar or identical to the Complainant's registered marks ZIONS BANK, ZIONSBANK.COM, and ZIONS, and is otherwise confusingly similar to these registered marks;
ii. The replacement of the letter "s" with "z" after "zion", appears to be an effort by the Respondent to take advantage of users seeking to find "www.zionsbank.com", and the services offered at that site, but who mistakenly type the Complainant's marks incorrecly;
iii. The Respondent is not a licensee of the Complainant's trademarks, and has not otherwise obtained authorization to use the Complainant's marks;
iv. 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;
v. The Respondent is clearly trying 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 disputed domain name and on the Respondent's website;
vi. The disputed domain name leads to a website that may provide malicious code, which could have a severe and detrimental impact on users of the website, and if used for other purposes, could confuse consumers as to the source of the goods being offered under the Complainant's marks;
vii. Because the Respondent's website is misleading, the Respondent may also use it in connection with various phishing and fraudulent activities;
viii. Given the warnings that appear on the website associated with the disputed domain name, the Respondent's use of the Complainant's marks may tarnish the Complainant's marks that are at issue in this Complaint;
ix. The Complainant has prevailed on complaints for the domain names <wwwzionsbank.com> and <zionsbanks.com>, which are virtually identical to the disputed domain name. See Zions Bancorporation v. Domain Administrator, Fundacion Private Whois, WIPO Case No. D2014-0465, and Zions Bancorporation v. Whois Privacy Service Pty Ltd/Mike Patterson, WIPO Case No. D2013-0866.
x. By using the dominant portion of 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 mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove 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 is registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
As explained in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark 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 Internet user confusion.
The Panel finds that ZIONS is readily recognized within the disputed domain name as the Complainant's inherently distinctive mark.
Along this line, the Panel notes that, from an aural perspective, the Respondent's disputed domain name <zionzbank.com> is indistinguishable from the Complainant's ZIONS, ZIONS BANK, and ZIONSBANK.COM marks.
It is well established that a generic Top Level Domain (gTLD) such as ".com", may be excluded from the comparison of a complainant's trademark and a domain name. In this case however, even if the disputed domain name were to be taken as a whole, it would be deemed nearly identical to the Complainant's ZIONSBANK.COM trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's marks in the sense of Policy, paragraph 4(a)(i).
The Complainant has thus passed through the first gateway of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
i. before any notice to you of the dispute, your 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; or
ii. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent's rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant represents not having authorized use of its ZIONS marks to the Respondent, either as a domain name or otherwise.
The Complainant also submits that 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.
In view of the reputation and distinctiveness of the Complainant's ZIONS formative marks as a result of their continuous use in the US market for more than fifteen years, both physically and online, as well as the competing links featured on the Respondent's website, the Panel does not find it likely that the Respondent has rights or legitimate interests in the disputed domain name within the meaning of the Policy.
This finding is only reinforced by the Respondent's default in the instant proceedings. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name).
Consequently, the Complainant has satisfied the second prong of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
"(i) circumstances indicating that you [the respondent] have registered or…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 that complainant, for valuable consideration in excess of your [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent's] website or location or of a product or service on your [the respondent's] website or location."
It has been established that the Complainant has held registered trademark rights in the United States over the marks ZIONS and ZIONS BANK since August 29, 2000. That is more than five years prior to the Respondent's registration of the disputed domain name on November 26, 2005.
As noted in section 6.A supra, the disputed domain name would be literally identical to the Complainant's ZIONS marks were it not for the substitution of the letter "s" in the Complainant's marks, for the letter "z" in the disputed domain name. This practice, commonly known as typosquatting, aims to make Internet users fall into error when typing a trademark on the address bar of the browser or selecting a website from a list of search engine results.
Many UDRP Panels have held that typosquatting in and of itself establishes bad faith registration and use in the context of the Policy. See for instance Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568 (typosquatting is virtually per se registration and use in bad faith); and also Sahibinden Bilgi Teknolojileri Pazarlama ve Ticaret Anonim Sirketi v. Tansel Buyukkarakas Bekir Kahraman, WIPO Case No. D2009-1541 (it has been accepted in several previous panel decisions that typosquatting itself is evidence of bad faith registration and use).
The Panel also takes notice that the Respondent's website offers PPC access to banking products and services in competition with those provided by the Complainant.
In this Panel's opinion, the Respondent's registration of a domain name that is confusingly similar to the Complainant's marks can only have the purpose of misleading, deceiving, phishing, scamming, or illegitimately profiting (through PPC fees) from the Internet users' innocent mistake in reaching Respondent's website. See Bforbank S.A. v. Transure Enterprise Ltd/Above.com Domain Privacy, WIPO Case No. D2010-1300 (the respondent registered and used the domain name <bfobank,com> in bad faith to profit from the typos to be foreseeably made by Internet users in trying to gain access to the Complainant's online banking services provided under its BFORBANK mark).
Consequently, it is to be found that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source of the website, which constitutes bad faith under paragraph 4(b)(iv) of the Policy.
Last but not least, the Panel finds that the contact information provided by Respondent is presumably false, as shown by a cursory search on Google Maps, which did not match any street under the name of 'south service road' in the city of Santiago, Chile, let alone a 0000000 zip code. The provision of false contact information on WhoIs is additional evidence of bad faith on the part of Respondent.
In sum, the Panel holds that the disputed domain name was registered and is being used in bad faith within the purview of the Policy.
The Complainant has therefore discharged its burden in connection with paragraph 4(a)(iii) of the Policy.
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 <zionzbank.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: December 15, 2014