WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A., a national banking association, dba California Bank & Trust v. Chiemela James, LJ Enterprise
Case No. D2017-0711
1. The Parties
Complainant is ZB, N.A., a national banking association, dba California Bank & Trust of Salt Lake City, Utah, United States of America (“United States”), represented by TechLaw Ventures, PLLC, United States.
Respondent is Chiemela James, LJ Enterprise of Umuahia, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <calibanktrust.com> (the “Domain Name”) is registered with Upperlink Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2017. On April 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 10, 2017, 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 Respondent of the Complaint, and the proceedings commenced on April 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 11, 2017.
The Center appointed Gregor Vos as the sole panelist in this matter on May 29, 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
Complainant is the owner of the following United States trademarks used in connection with its banking and financial services (hereinafter the “Trademarks”):
- United States Registration No. 3,041,054 for CALIFORNIA BANK & TRUST, registered on January 10, 2006;
- United States Registration No. 2,477,581
for registered on August 14, 2001;
- United States Registration No. 2,618,487 for CALBANK NETWORK, registered on September 10, 2002.
Further, Complainant’s parent company, Zions Bancorporation, has been the registrant of the domain name <calbanktrust.com> since July 13, 1998.
The Domain Name has been registered by the Respondent since February 15, 2017. The Domain Name resolves to a website advertising the services of a website hosting company.
5. Parties’ Contentions
Complainant asserts to have been doing business under the name California Bank & Trust since October 1, 1998. According to Complainant, it has used the CALIFORNIA BANK & TRUST mark, the CALIFORNIA BANK & TRUST (and design) mark and the CALBANK NETWORK mark in commerce since 1998. California Bank & Trust, which is predecessor in interest to Complainant, originally filed the trademark registrations for these marks, but later transferred these to the Complainant. All the Trademarks are registered for various banking services.
Complainant asserts that the Domain Name is identical or confusingly similar to the Trademarks, as it includes the dominant part of the Trademarks or the abbreviated terms of the Trademarks and as the Trademarks are clearly recognizable within the Domain Name. According to Complainant, there is a risk that Internet user may believe that there is a connection between the Domain Name and Complainant’s products and services. Furthermore, Complainant states that this is a case of “typosquatting”, as the dominant or principal parts of the Trademarks are included in the Domain Name.
Complainant furthermore submits that Respondent does not hold any rights or legitimate interests with respect to the Domain Name. Complainant has not been aware of any evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Complainant states that the Domain Name resolves to an unsecure website that displays an apparent advertisement by a website hosting company. Complainant also submits that it is not aware that the Respondent has been commonly known by the Domain Name or that Respondent is making a legitimate noncommercial or fair use of the Domain Name. Complainant has not authorized Respondent’s use of the Domain Name.
Finally, Complainant asserts that the Domain Name has been registered and used in bad faith. Complainant states that the use of identical or confusingly similar marks in the Domain Name indicates that the Domain Name was registered primarily for the purpose of disrupting the business of Complainant. Furthermore, Complainant submits that Respondent is trying to exploit the goodwill of Complainant and the Trademarks by diverting consumers to Respondent’s website for commercial gain or malicious purposes. In addition, Complainant asserts that considering the repute of the Trademarks, Respondent knew or should have known about the Trademarks at the time it registered the Domain Name.
Consequently, Complainant requests that the Domain Name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Based on paragraph 4(a) of the Policy, a request to transfer a domain name must meet three cumulative conditions:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Only if all three elements are fulfilled, the Panel is able to grant the remedies requested by Complainant.
A. Identical or Confusingly Similar
Complainant has sufficiently proven that it is the owner of the Trademarks.
The threshold test for confusing similarity under the Policy involves a comparison between the trademarks and the domain name to assess whether the trademarks are recognizable within the domain name. Normally, the generic Top-Level Domain (“gTLD”) suffix “.com” can be ignored in the comparison between the domain name and the trademark. This case does not contain any indications to the contrary.
Although the Domain Name is not identical to any of the Trademarks, the Panel finds that the mere deletion of the element “fornia” in the “California” part of the Trademark is not sufficient to avoid a finding of confusing similarity. The Trademarks are still clearly recognizable within the Domain Name. This, in combination with the fact that Complainant itself is using the domain name <calbanktrust.com>, leads to the finding that an Internet user viewing the Domain Name would likely confuse the Domain Name with the Trademarks.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Complainant bears the burden of proof of showing that the Respondent has no rights or legitimate interests in the Domain Name. If a complainant succeeds in making a prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Paragraph 4(c) of the Policy provides circumstances in which such rights or legitimate interests to the domain name may be demonstrated. These circumstances include (i) use of the domain name in connection with a bona fide offering of goods or services; (ii) being commonly known by the domain name; and (iii) making legitimate noncommercial or fair use of the domain name.
Complainant has asserted that Respondent has not met these circumstances. Complainant has stated that Respondent was not authorized or licensed to use the Trademarks. Furthermore, Complainant has submitted evidence that the Domain Name resolves to a website that displays an advertisement by a website hosting company.
The Panel finds that these circumstances indicate that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the Domain Name, but instead indicate that Respondent is taking advantage of the Trademarks for its own commercial purposes when it diverted traffic by creating confusion with the Trademarks.
Based on the record before it, the Panel finds that Complainant’s prima facie case is sufficiently established. The burden of production therefore shifts to Respondent.
Respondent has not refuted the assertions by Complainant.
Consequently, the Panel finds that the requirement under paragraph 4(a)(ii) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Complainant must establish that Respondent registered and subsequently is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides circumstances which, if present, shall be evidence of the registration and use of a domain name in bad faith.
The current case appears to be a clear case of “typosquatting”, i.e., the intentional registration of a domain name with slight misspelling of a trademark. Although it does not appear from the case file that Respondent attempted to sell the Domain Name to Complainant, it is the consensus view that this does not as such prevent a finding of bad faith. Moreover, a practice of “typosquatting” generally evidences knowledge of the trademarks at the time of registration of the domain name.
Combing the notion of “typosquatting” with the fact that the Domain Name resolves to a website that displays an advertisement by a website hosting company, the Panel finds confirmed that Respondent intentionally attempted to attract Internet users, for commercial gain, to its website under the Domain Name by creating a likelihood of confusion as set out in paragraph 4(b)(iv) of the Policy. By doing so, it is clear that Respondent sought to take commercial advantage of Complainant’s Trademarks, therefore also using the Domain Name in bad faith.
Consequently, the Panel finds that the requirement under paragraph 4(a)(iii) of the Policy has been fulfilled.
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 <calibanktrust.com> be transferred to Complainant.
Date: June 23, 2017