WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A., dba Zions First National Bank v. Travis Smith, Lexq Media Inc
Case No. D2016-2404
1. The Parties
The Complainant is ZB, N.A., dba Zions First National Bank of Salt Lake City, Utah, United States of America, represented by John Rees Law, PLLC, United States of America.
The Respondent is Travis Smith, Lexq Media Inc of Littleton, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <zionbcnk.com> (“Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2016. On November 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 29, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2016.
The Center appointed Ellen B Shankman as the sole panelist in this matter on January 3, 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 date of the Domain Name registration was October 18, 2016. The Complainant provided evidence of multiple trademark registrations for the mark ZIONS, ZIONS BANK and ZIONSBANK.COM including, inter alia, United States Trademark, No. 2,380,235 (registered on August 29, 2000 for ZIONS) and United States Trademark No. 2,531,436 (registered on January 22, 2002 for ZIONSBANK.COM), that predate the date of the Domain Name registration for a variety of related goods.
The Panel also conducted an independent search to determine that the Domain Name is currently resolves to a page with a “404” error message and the website currently appears to be inactive.
Since the Respondent did not respond, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
The Complainant has been using its ZIONS mark in commerce since at least as early as 1891, and obtained United States registration for ZIONS mark on August 29, 2000. The Complainant has been using its ZIONS BANK mark in commerce since at least as early as 1992, and obtained United States registration for ZIONS BANK mark on August 29, 2000. The Complainant has been using its ZIONSBANK.COM mark in commerce since at least as early as 1995, and obtained United States registration for ZIONSBANK.COM mark on January 22, 2002. Zions Bancorporation, the parent of the Complainant, was the original applicant and registrant of these trademarks, but Zions Bancorporation subsequently assigned these marks to the Complainant. These registered marks are in use by the Complainant and registered for a wide variety of financial services.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademarks ZIONS, ZIONSBANK and ZIONSBANK.COM in respect of a wide range of financial services. The Domain Name is confusingly similar to the trademarks owned by the Complainant. The substitution of the letter “c” for the “a” in bank is a deliberate typo squatting on the trademarks owned by the Complainant and does not significantly affect the appearance or of the Domain Name. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademarks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for ZIONS, ZIONSBANK and ZIONSBANK.COM.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks. Further, the Panel finds that the substitution of the letter “a” with the letter “c” in the word “bank” in the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademarks, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Name fully incorporates the Complainant’s trademark with a single misspelling of an element of the mark, namely the substitution of the letter “c” for the letter “a”. The Panel notes that registration of the Domain Name with the slight misspelling could be regarded as “typo squatting”. The intentional misspelling of the Complainant’s trademark, so-called typo squatting, could not be considered as fair use and is the obverse of a legitimate noncommercial or fair use of a domain name. See FragranceX. com, Inc. v. Argosweb Corp a/k/a Oleg Techino, WIPO Case No. D2010-1237.
Even where the Domain Name resolves to an “error” page, the Panel does not believe that it changes the finding. As stated in paragraph 3.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), regarding the question of whether there can be use in bad faith when the domain name is not actively used and there is passive holding, the consensus view is that it can: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. […] Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, [and] no response to the complaint having been filed […]. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere ‘parking’ by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).” See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
The Panel finds compelling factual and circumstantial evidence in the record that the Respondent likely knew of the Complainant’s mark when it registered the Domain Name.
It has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464).
Given the evidence of the Complainant’s prior rights in the mark, the timing of the registration of the Domain Name, together with evidence of the “typo squatting” use of the mark in the Domain Name by the Respondent, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name <zionbcnk.com> be transferred to the Complainant.
Ellen B Shankman
Date: January 11, 2017