WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A. dba National Bank of Arizona v. To Thi Thanh Tam / Vietnam Domain Privacy Services
Case No. D2016-2341
1. The Parties
The Complainant is ZB, N.A. dba National Bank of Arizona of Salt Lake City, Utah, United States of America (“United States”), represented by John Rees Law, PLLC of United States.
The Respondent is To Thi Thanh Tam of Ho Chi Minh City, Viet Nam / Vietnam Domain Privacy Services of Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <wwwnbarizona.com> (“the Domain Name”) is registered with April Sea Information Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2016. On November 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 23, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 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 November 28, 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 December 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on January 10, 2017. 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 and its predecessor in title have been doing business under the name National Bank of Arizona since May 6, 1996. The Complainant is the owner of the following registered trade marks in the United States:
(a) Trade Mark Registration No 3,916,017 for NB|AZ in class 36, filing date April 3, 2010, registered on February 8, 2011, date of first use and use in commerce – November 1, 2009;
(b) Trade Mark Registration No 2,914,624 for NATIONAL BANK OF ARIZONA in class 36, filing date November 6, 2003, registered on December 28, 2004, date of first use and use in commerce – May 15, 1982;
(c) Trade Mark Registration No. 2,968,640 for NATIONAL BANK OF ARIZONA (stylised) in class 36, filing date November 6, 2003, registered on July 12, 2005, date of first use and use in commerce – January 1, 2005.
(d) (together “the Trade Marks”).
The Complainant advertises and offers its banking services on websites connected to the domain names <nbaz.com> and <nbarizona.com>. These two domain names are registered in the name of the Complainant’s parent company Zions Bancorporation on June 27, 2005.
The Respondent registered the Domain Name on August 24, 2004. It is connected to a pay-per-click (“PPC”) website (“the Website”) which has links to products and services which competes with those of the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Marks.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name consists of the acronym for world wide web “www” followed by the letters “nb” and then “arizona”. The Complainant contends that the “www” should be ignored for these purposes so that in effect the part of the Domain Name which needs to be considered in determining the likelihood of Internet user confusion is “nbarizona”. For these purposes the “.com” suffix should also be ignored. The Complainant further contends that “nbaz” is the truncated version of National Bank of Arizona which accounts for its registration of the NB|AZ trade mark and the only difference between the registered trade mark and this part of the Domain Name is the inclusion of the intervening letters “ri”. There are in fact two intervening letters “ri” between “nb” and “az”. The Complainant also contends that the Domain Name is confusingly similar to the trade mark NATIONAL BANK OF ARIZONA. It is included and recognizable in the Domain Name in the form of the “nb” being the abbreviated version of “national bank” plus “arizona”.
It would have been helpful if the Complainant had provided evidence that it is known as “NB Arizona” and therefore has established unregistered rights in the expression if that is the case.
The Consensus View on this issue as set out in paragraph 1.10 in the WIPO of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO 2.0”) says this:
“A domain name which contains a common or obvious misspelling of a trade mark normally will be found to be confusingly similar to such trade mark, where the misspelled trademark remains the dominant or principal component of the domain name.”
Another relevant factor when considering the issue is the combination of two different trade marks of a complainant in a domain name much like the incorporating of a complainant’s trade mark and a third party’s mark. UDRP panels have consistently found that a respondent’s inclusion of a third party’s trademark in its domain name does not eliminate the visual impression that a disputed domain name is associated with a complainant’s trademark. This would also be the case when two trade marks of a complainant is combined.
In this case, the Panel is of the view that the addition of the letters “ri” between “nb” and “az” and the geographical name “arizona” which forms part of the Domain Name is a misspelling of the NB|AZ trade mark, given that “NB|AZ” is the truncated version of the National Bank of Arizona. In addition, the Domain Name is also a combination of the predominant elements of two of the Complainant’s trade marks NB|AZ and BANK OF ARIZONA. Further, the Panel accepts that “NB Arizona” is the truncated version of the National Bank of Arizona and therefore confusingly similar to the Domain Name. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non- commercial 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of WIPO 2.0 that 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 does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has been using the NB|AZ trade mark since 2009 and obtained registration in 2011 whilst is has been using the NATIONAL BANK OF ARIZONA trade mark since 1982 and obtained registration since 2004. The Complainant also says that it has been doing business under the name NATIONAL BANK OF ARIZONA since May 6, 1996. The Complainant contends that it is unaware of any evidence of the Respondent’s use of or demonstrable preparations to the use the Domain Name in connection with a bona fide offering of goods and services. The Complainant also contends that the Respondent is not commonly known by the Domain Name nor does it have any trade marks for the Domain Names. It is not a licensee of the Complainant nor in any way authorized to use the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. As such the second element is proven.
D. Registered and Used in Bad Faith
The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true. Conclusory allegations without supporting evidence would usually not suffice. To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The date to consider whether registration was in bad faith is the date that the Domain Name was registered on August 24, 2004.
The Consensus View in paragraph 3.1 of the WIPO 2.0 states as follows:
“Generally speaking, although a trade mark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant’s relied upon trade mark right is shown to have been first registered (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
The Domain Name was registered on August 24, 2004. The NB|AZ trade mark post dates the registration of the Domain Name. The Complainant has not addressed this point in the Complaint nor why it did not take any action against the Respondent for 12 years. NB|AZ was registered in 2011. The BANK OF ARIZONA trade mark was registered on December 28, 2004 but filed on November 6, 2003. The question is whether the Respondent knew or should have known about the BANK OF ARIZONA trade mark at the time of the registration of the Domain Name. Given the fact that the Panel accepts that the Domain Name is confusingly similar to the BANK OF ARIZONA trade mark and the BANK OF ARIZONA trade mark was filed prior to the registration of the Domain Name, the Panel accepts that the Respondent must have known about the BANK OF ARIZONA trade mark. The registration of the Domain Name was therefore in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The Website is a PPC website which has links to products and services which competes with those of the Complainant.
The Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. Such use amounts to use in bad faith.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name, <wwwnbarizona.com>, be transferred to the Complainant.
Date: February 20, 2017