WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A. dba Zions First National Bank v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, PPA Media Services
Case No. D2016-0369
1. The Parties
The Complainant is ZB, N.A. dba Zions First National Bank of Salt Lake City, Utah, United States of America ("United States" or "U.S."), represented by Callister Nebeker & McCullough, United States.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas / Ryan G Foo, PPA Media Services of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <zoinsbank.com> is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 23, 2016. On February 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2016, 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 February 29, 2016, 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 March 1, 2016.
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 the Respondent of the Complaint, and the proceedings commenced on March 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2016.
The Center appointed Jane Lambert as the sole panelist in this matter on April 1, 2016. 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 a national banking association, that is to say a bank that has been organized under the U.S. National Bank Act which carries on business under the authority of the U.S. Comptroller of the Currency and is thus a member of the U.S. Federal Reserve System. It has carried on business in the name or style of "Zions First National Bank" or "Zions Bank" since June 12, 1890.
The Complainant has registered and used the following U.S. trade marks:
- ZIONS BANK, Registration No. 2,381,006, registered on August 29, 2000
- ZIONSBANK.COM, Registration No. 2,531,436, registered on January 22, 2002
- ZIONS, Registration No. 2,380,325; registered on August 29, 2000
in respect of a comprehensive range of financial services.
The Complainant's holding company advertises its business and supplies certain services through a website at "www.zionsbank.com".
The disputed domain name was registered on November 2005.
The disputed domain name resolves to a holding page with links to a number of sponsored links.
5. Parties' Contentions
The Complainant asks for the transfer of the disputed domain name on the following grounds:
First, the disputed domain name differs from the above-mentioned registered trade mark ZIONSBANK.COM (and indeed the word "zions", which is the sole or dominant element in the other marks) only by the transposition of the letters "O" and "I". That appears to be a deliberate spelling mistake calculated to divert Internet users who have mistyped the Complainant's URL to the Respondent's site. It is a practice known as "typo-squatting". The Complainant relies upon the consensus view at paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Secondly, the Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
- The Respondent could not lawfully use the disputed domain name in the U.S. because such use would infringe the Complainant's registered trade marks and amount to passing off certainly in that country and perhaps elsewhere;
- There is no evidence of the Respondent's use or preparation to use the disputed domain name for a bona fide offering of goods or services;
- There is no evidence that the Respondent or any business connected with it is commonly known by the disputed domain name; and
- The Respondent does not appear to have any trade mark or other intellectual property rights in the disputed domain name and has never been licensed to use that domain name by the Complainant.
Thirdly, the Complainant says that the disputed domain name was registered and used primarily for the purpose of disrupting the Complainant's business and/or to take advantage of its Internet traffic and goodwill to divert users to the parking page with sponsored links and searches mentioned above. Further, the Respondent has used a privacy service to hide its registration. Finally, this has not been the first time the Respondent has had to respond to a complaint such as this, and the Complainant cites Zions Bancorporation v.Ryan G Foo, PPA Media Services / Domain Admin, Whois Privacy Corp., WIPO Case No. D2014-2278 (<zionsbanl.com>), and Zions Bancorporation v. Ryan G Foo / PPA Media Services, WIPO Case No. D2014-1797 (<zionzbank.com>), as examples.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4 (a) of the Policy requires the Complainant to prove:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of such disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove that each of these three elements is present.
A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
The disputed domain name differs from the Complainant's ZIONSBANK.COM trademark (U.S. trade mark number 2,531,436) only in respect of the transposition of the letters "I" and "O". The Panel sees no reason to depart from the consensus view set out in paragraph 1.10 of the WIPO Overview 2.0 that "a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name" and relies on the cases cited in that paragraph.
B. Rights or Legitimate Interests
The Panel finds that the second element is present.
In view of the Complainant's trade mark registrations and the Complainant's goodwill in relation to the ZIONS BANK sign it is hard to see how the Respondent could establish rights or legitimate interests in a domain name incorporating or confusingly similar to the Complainant's trade mark. The Complainant has also made clear that it has not licensed or otherwise permitted the Respondent to carry on business or otherwise use the Complainant's trade mark.
The Respondent had an opportunity to adduce evidence of rights or legitimate interests in the disputed domain name but chose not to avail itself of the opportunity.
In the absence of any evidence to the contrary, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel holds that the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith: One of those circumstances in set out on paragraph 4(b)(iv):
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location."
It is not disputed that the disputed domain name is used for a holding page with a number of sponsored links and searches the clicking of which will generate revenue for the Respondent. That would be a "commercial gain" within the meaning of the paragraph 4(b)(iv). The Panel has already held that the disputed domain name is confusingly similar to ZIONSBANK.COM trademark (U.S. trade mark number 2,531,436). Thus there is a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on such website. The overwhelming likelihood is that the use of the disputed domain name for these purposes is intentional.
In the absence of any evidence to the contrary, the Panel holds that the disputed domain name has been registered and is being used in bad faith.
The previous UDRP decisions cited above suggest that the Respondent has engaged in a pattern of registering domain names to which it is not entitled, but that has not prevented the Respondent from continuing to register domain names corresponding to trade marks to which the Respondent has no entitlement.
The Panel does not agree that the use of a privacy service automatically indicates registration and use in bad faith. However, in conjunction with the Respondent's use of the disputed domain name for a holding page as described above, the Respondent's use of a privacy service supports the Panel's finding of registration and use 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 <zoinsbank.com> be transferred to the Complainant
Date: April 15, 2016