WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zions First National Bank v. Erika McGavern / Rosie Noble
Case No. D2015-0929
1. The Parties
The Complainant is Zions First National Bank of Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America.
The Respondent is Erika McGavern of Dover, Delaware, United States of America; Rosie Noble of Stevenage, Hertfordshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <zionsank.com> is registered with Pheenix, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2015. On June 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2015, 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 June 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2015. On June 2, 2015, the Center received an email from the Respondent that in translation reads "Hello. There is no need to pay the litigation fee. I can transfer the domain name at cost price. I did not intend to infringe your IP rights when I purchased this domain name. I could transfer it to you by USD 300."
The Respondent did not submit any formal response other than this email. Accordingly, the Center notified the Respondent of the proceeding to panel appointment upon her default on July 1, 2015.
On July 2, 2015, the Center transmitted an email to the Registrar regarding the change of the registrant information after the commencement of the proceeding. On July 2, 2015, the Center received a reply from the Registrar, indicating "the domain name remains in the Registrant's account. They have however changed the WhoIs information for their account."
The Center appointed Richard G. Lyon as the sole panelist in this matter on July 9, 2015. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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, based in the State of Utah, United States of America, offers retail banking and other financial services. The Complainant holds service marks duly registered on the principal register of the United States Patent & Trademark Office (USPTO) for ZIONS (registered 2000), ZIONS BANK (2000), and ZIONSBANK.COM (2002). Since 1995 its principal website has been "www.zionsbank.com".
The disputed domain name was created on April 17, 2015. The disputed domain name resolves to a pay-per-click list of hyperlinks all of which are related to financial services. Immediately below the box of hyperlinks is the following text:
"2015 Copyright. All Rights Reserved.
The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois)."
5. Parties' Contentions
The Complainant contends as follows:
1. The disputed domain name is confusingly similar to the Complainant's three USPTO-registered service marks.
2. The Respondent lacks a right or legitimate interest in the disputed domain name. The Complainant has never licensed the Respondent the Respondent to use its marks; the Respondent has never been commonly known by the phrase ZIONSANK or anything similar; and the use of the disputed domain name for hyperlinks to services competitive with those offered by the Complainant is not bona fide under the Policy.
3. The Respondent registered and has used the disputed domain name in bad faith. The use in the disputed domain name of a title identical or similar to the Complainant's marks indicates that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant. The Respondent is clearly trying to attract customers of the Complainant to the Respondent's website for commercial gain by creating a likelihood of confusion with Complainant's trademarks. By using the dominant portion of 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 Respondent's website. The lack of active use of a domain name does not prevent a finding of bad faith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.2. A domain name registrant is normally responsible for content appearing on a website, such as hyperlinks, even if the registrant does not exercise direct control over the website or content. WIPO Overview 2.0, paragraph 3.8.
The Respondent did not formally reply to the Complainant's contentions.
6. Discussion and Findings
Unlike civil litigation, the Respondent's default does not result in an automatic decision in the Complainant's favor or an admission of the truth of the factual allegations in the Complaint. WIPO Overview 2.0, paragraph 4.6. Even in a default case "[t]he Policy requires the Complainant to prove each of the three elements. Policy, paragraph 4." Western Research 3000, Inc. v. NEP Products, Inc. WIPO Case No. D2004-0755, emphasis in original.
The Complainant in this proceeding has carried its burden of proof under each Policy element. The disputed domain name differs from one of the Complainant's registered marks by only a single letter and employs the dominant feature of all those marks. Nothing in the record or on the Respondent's website indicates that the Respondent has a right or legitimate interest in the word ZION or any phrase incorporating that word. The fact that the disputed domain name is a close misspelling of the Complainant's business name and service mark demonstrates knowledge of the Complainant and its marks and supports an inference that the disputed domain name was registered to take advantage of them, establishing both the necessary elements (registration and use) of bad faith. In summary this appears to be a clear case of typosquatting that the Complainant has supported with proper proof.
The record presents two subsidiary questions, each of which the Panel may easily resolve. The first is whether the Respondent's email to the Center, quoted above, obviates the need for a decision by constituting the Respondent's consent to transfer. See WIPO Overview 2.0, paragraph 4.13. This Panel finds that not to be the case by reason of the Respondent's request (demand?) for a payment of USD 300. While perhaps a nominal amount in relation to "litigation costs" USD 300 well exceeds the Respondent's likely "documented out-of-pocket costs directly related to the domain name" (Policy, paragraph 4(b)(i)). The Respondent has made no use of the disputed domain name and so her only documented out-of-pocket expense is registration itself, customarily an amount not exceeding USD 10 or 20. Rather than aiding the Respondent, her communication is thus further evidence of bad faith.
The quoted portion of text from the disputed domain name raises the question of whether the Panel may ascribe the hyperlink farm at the disputed domain name to the Respondent. The Complainant correctly notes the general rule that registrar-generated content does satisfy the requirement of paragraph 4(a)(iii) of the Policy, but there is a proviso: "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." Here the record includes ample other indicia of cybersquatting, most notably those ordinarily associated with typosquatting and an offer to sell the disputed domain name to the mark owner. A quick check at Domain Tools reveals that 199 domain names are registered in the name of Erika McGavern and 48 in the name of Rosie Noble. These domain names are spread among many generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs") and many different registrars. The Respondent thus is no stranger to the domain name system or process and will be held to understand, even expect, the routine consequences of failure to build out a website immediately after registration, particularly where there is an obvious inference of inappropriately targeting a third party trademark.
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 <zionsank.com> be transferred to the Complainant.
Richard G. Lyon
Date: July 13, 2015