WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A., a national banking association, dba Zions First National Bank v. Private Registration, PRIVATE
Case No. D2017-0714
1. The Parties
Complainant is ZB, N.A., a national banking association, dba Zions First National Bank of Salt Lake City, Utah, United States of America (“USA” or “US”), represented by TechLaw Ventures, PLLC, USA.
Respondent is Private Registration, PRIVATE of Nanjing, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <zinsbank.com> (the “Domain Name”) is registered with Vautron Rechenzentrum AG (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 11, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 12, 2017.
The Center appointed Gregor Vos as the sole panelist in this matter on May 19, 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 US trademarks (hereinafter: the “Trademarks”):
US Registration No. 2,381,006 for ZIONS BANK, registered on August 29, 2000;
US Registration No. 2,531,436 for ZIONSBANK.COM, registered on January 22, 2002; and
US Registration No. 2,380,325 for ZIONS, registered on August 29, 2000.
Further, Complainant’s parent company, Zions Bancorporation, has been the registrant of the domain name <zionsbank.com> since July 5, 1995, from which Complainant advertises and offers its banking services.
The Domain Name has been registered by the Respondent since November 14, 2005 and resolves to a website displaying sponsored links to Complainant and its competitors.
5. Parties’ Contentions
Complainant asserts to have been doing business under the name Zions First National Bank since June 12, 1890. According to Complainant, it has used the ZIONS mark in commerce since 1891, the ZIONS BANK mark since 1992 and the ZIONSBANK.COM mark since 1995. Complainant’s parent company, Zions Bancorporation, originally filed these registrations, but later transferred these to Complainant. All referenced marks are registered for various financial services.
Complainant asserts that the Domain Name is identical or confusingly similar to its referenced trademarks. Complainant states that this is a case of “typosquatting”, as the referenced marks are included and recognizable in the Domain Name with the exception of the deletion of the letter “o” from the term “zions”. Respondent has engaged in such “typosquatting” to take advantage of users seeking to find Complainant’s domain name <zionsbank.com>.
Second, Complainant states that Respondent has no rights or legitimate interests in respect of 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 is also not aware that Respondent has been commonly known by the Domain Name. Respondent also is not making a legitimate noncommercial or fair use of the Domain Name, and Complainant has not authorized Respondent’s use of the Domain Name.
Third, Respondent has registered and uses the Domain Name in bad faith. Respondent is trying to exploit the goodwill of Complainant and its referenced Trademarks by diverting customers of Complainant from Complainant’s website to Respondent’s website for commercial gain or malicious purposes. Respondent is intentionally creating a likelihood of confusion with Complainant’s referenced trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The website under the Domain Name displays Complainant’s referenced Trademarks and links to competing financial services. Also, considering the repute of the referenced Trademarks of Complainant, Respondent knew or should have known about Complainant’s referenced 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 remedy requested by Complainant.
A. Identical or Confusingly Similar
Complainant has sufficiently proven that it is the owner of the Trademarks.
Although the Domain Name is not identical to any of the Trademarks, the Panel does find that the mere deletion of the letter “o” in the “zion” part of the Trademarks does not lead to the conclusion that the Domain Name and Complainant’s Trademarks are not confusingly similar. This is in line with the consensus panel view (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Jurisprudential Overview 3.0”), paragraph 1.9). The misspelled Trademarks remain the dominant or principal component of the Domain Name. As such, the Trademarks remain recognizable within the Domain Name (see also ZB, N.A., dba Zions First National Bank v. Travis Smith, lexq Media Inc, WIPO Case No. D2016-2404).
Normally, the generic Top-Level Domain (“gTLD”) suffix “.com” can be ignored in the comparison between the Domain Name and the Trademarks. Nevertheless, the Panel notes that one of the Trademarks includes this same gTLD suffix.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Complainant must make a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name. If a complainant succeeds in making its 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 disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Paragraph 4(c)(i-iii) 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 or demonstrable preparations to use 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 or demonstrated any rights or legitimate interests otherwise. Indeed, the circumstance that Respondent has used the Domain Name to refer to a website containing links to Complainant and other competing financial services, suggests the opposite.
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
To fulfill the final element under the Policy, Complainant must prove that the Domain Name has been both registered as well as used 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 third-party 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 Complainant’s Trademarks at the time of registration of the Domain Name. Therefore, the Panel finds that the Domain Name has been registered in bad faith.
Combining the notion of typosquatting with the fact that the Domain Name resolves to a website that contains links to Complainant as well as other competing financial services, the Panel finds confirmation that Respondent intentionally attempted to attract Internet users, for commercial gain, to its website under the Domain Name 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, <zinsbank.com>, be transferred to Complainant.
Date: June 2, 2017