WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zions First National Bank v. Namescope Limited/Domain Hostmaster, Customer ID: 71451303542601, Whois Privacy Services Pty Ltd
Case No. D2015-1837
1. The Parties
Complainant is Zions First National Bank of Salt Lake City, Utah, United States of America ("USA"), represented by Callister Nebeker & McCullough, USA.
Respondent is Namescope Limited of Charlestown, Nevis, Saint Kitts and Nevis / Domain Hostmaster, Customer ID: 71451303542601, Whois Privacy Services Pty Ltd of Valley, Queensland, Australia.
2. The Domain name and Registrar
The disputed domain name <zionsfirstnationalbank.com> is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2015. On October 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2015, 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 Complainant on October 20, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 22, 2015.
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 Respondent of the Complaint, and the proceeding commenced on October 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 16, 2015.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on November 19, 2015. 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
Complainant is a national bank association with its place of business in Salt Lake City, Utah, USA. Complainant does business under the name ZIONS since June 12, 1890 and owns the following trademark registrations before the United States Patent and Trademark Office, all in International Class 36, as per Annex 4 of the Complaint: ZIONS BANK, registration no. 2,381,006 since August, 2000; ZIONSBANK.COM, registration no. 2,531,436 since January, 2002; and ZIONS, registration no. 2,380,325 since August, 2000.
Since July 5, 1995 Zions Bancorporation, the parent company of Complainant, owns the domain name <zionsbank.com>, as per Annex 5 of the Complaint.
Respondent registered the disputed domain name in November 20, 2005, which directs consumers to a website that references various banking terms and links to financial services.
5. Parties' Contentions
Complainant asserts that the disputed domain name is confusingly similar to Complainant's registered trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM. Furthermore, Complainant states that the addition of the terms "first", "national" and "bank", considered common and descriptive, is insufficient to prevent threshold Internet confusion and to avoid confusing similarity. Complainant refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraphs 1.2 and 1.9.
In addition, Complainant asserts that disputed domain name includes dominant and principal components of Complainant's registered trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM. Hence, Complainant argues it may cause Internet users to believe there is a connection between the disputed domain name and Complainant's products and services. According to Complainant, Respondent is intentionally creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name as, before filing the present Complaint, Complainant had not been aware of any evidence of Respondent's use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Instead, Complainant argues that disputed domain name directs consumers, directly or indirectly, to a website that references various banking terms and links to financial services, and likely confuses consumers as to the source of the goods being offered under Complainant's marks. In addition, Complainant also affirms that such website displays Complainant's registered trademarks, as shown in Annex 6 of the Complaint.
Complainant further asserts that the use of a domain name to post parking and landing pages does not confer by itself rights or legitimate interests arising from a bona fide offering of goods or services or from a legitimate noncommercial or fair use of the domain name, as stated in WIPO Overview 2.0, paragraph 2.6. Furthermore, Complainant argues that parking and landing pages are not permissible where the links displayed on the website are to competitive products and services of complainant, as Complainant considers being the case. Complainant refers to WIPO Overview 2.0, paragraph 2.6 to sustain these arguments.
Moreover, Complainant holds that Respondent, as an individual, business or other organization is not commonly identified by the disputed domain name. In addition, Complainant states that Respondent is not making legitimate noncommercial or fair use of the disputed domain name, is not a licensee of Complainant's trademarks nor has obtained authorization to use Complainant's trademarks. Finally, Complainant understands that Respondent is not using the disputed domain name as part of a bona fide offering of goods or services.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith, as it includes dominant parts of Complainant's registered trademarks and, on that account, is confusingly similar to such marks. In this sense, Complainant points that the use of virtually identical or similar marks in the disputed domain name indicates that Respondent registered it with the intention of disrupting Complainant's business, as well as to take advantage of the goodwill associated with Complainant's federally registered trademarks.
Additionally, Complainant asserts that Respondent is clearly trying to exploit both Complainant's and its trademark's goodwill by creating a likelihood of confusion with Complainant's trademarks and diverting Complainant's costumers to Respondent's website for commercial gain or malicious purposes.
Complainant also alleges that the use of Complainant's trademarks in the disputed domain name and on Respondent's website is misleading and may divert consumers from Complainant's official and authorized website to Respondent's website, which may also be used in connection with various phishing and fraudulent activities. According to Complainant, when using the disputed domain name to resolve to websites that may contain malware or competitive products and services of Complainant, Respondent could tarnish Complainant's trademarks. Complainant cites WIPO Overview 2.0, paragraph 3.11 to support these claims.
Complainant further adds that the disputed domain name has been registered using a private proxy service, which combined with other factors addressed in this Complaint, is an indication of bad faith registration, as stated in WIPO Overview 2.0, paragraph 3.9.
Complainant mentions several previous UDRP panels, which have decided similar cases, in which UDRP panels found that the registration and usage of the domain names demonstrated bad faith and, consequently, determined the transfer of such domain names to Complainant: Zions First National Bank v. Xu Shuaiwei / Domain Administrator, WIPO Case No. D2015-1177; Zions First National Bank v. Domain Admin / WhoIs Privacy Corp., WIPO Case No. D2015-1137; Zions First National Bank v. Erika McGavern / Rosie Noble, WIPO Case No. D2015-0929; Zions Bancorporation v. Ryan G Foo, PPA Media Services / Domain Admin, Whois Privacy Corp., WIPO Case No. D2014-2278,; and Zions Bancorporation v. Ryan G Foo / PPA Media Services, WIPO Case No. D2014-1797.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of trademark registrations for the trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM in the USA.
The disputed domain name <zionsfirstnationalbank.com> is composed by the dominant components of Complainant's trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM combined or with the addition of the generic terms "first" and "national".
The Panel understands that the disputed domain name contains Complainant's trademarks and, for this reason, is confusingly similar to Complainant's trademarks. Moreover, the disputed domain name creates a false association between Complainant and Respondent, misguiding consumers into believing that Respondent's activities have the same origin as to the products and services provided under the ZIONS trademarks.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant's trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview 2.0 as follows: "[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[s], the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
In this case, Complainant has provided sufficient prima facie proof of "no rights or legitimate interests", so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant's prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <zionsfirstnationalbank.com>.
The Panel acknowledges that Complainant has never entered into any agreement, authorization or license with Respondent, regarding the use of Complainant's trademarks, nor is Respondent affiliated with Complainant's activities whatsoever.
The Panel also understands that Complainant owns the trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM since, respectively, August 29, 2000, August 29, 2000 and January 22, 2002 and the domain name <zionsbank.com> since July 5, 1995, whereas Respondent only registered the disputed domain name on November 20, 2005. This shows that Complainant owns prior rights to the trademarks and domain name bearing the ZIONS trademarks.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: (iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant's trademarks at the time of registration of the disputed domain name. In this sense, the Panel concludes that Respondent registered the disputed domain name with the intention of taking advantage of Complainant's trademarks.
The Panel also understands that the fact that Respondent uses the famous mark ZIONS BANK as component of the disputed domain name, with the mere addition of the expressions "first" and "national", is not sufficient to avoid confusion between consumers, as these would instantly associate the disputed domain name with Complainant's services and activities.
The fact that the page to which the disputed domain name reverts displays references to banking activities (as per Annex 6 of the Complaint), is also a clear indications of Respondent's attempt to mislead consumers by causing a false association with Complainant, which certainly constitutes bad faith.
Lastly, the Panel also considers in this case the potential use of the disputed domain name for "phishing", as claimed by Complainant. If this were to be the case, such use would be another indication of bad faith, since such practice could seriously harm Complainant's clients as well as damage Complainant's reputation.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <zionsfirstnationalbank.com> be transferred to Complainant.
Gabriel F. Leonardos
Date: November 26, 2015