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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ZB, N.A., a national banking association, dba Zions First National Bank v. infoGroup

Case No. D2017-0716

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 (“US”), represented by TechLaw Ventures, PLLC, US.

Respondent is infoGroup of Omaha, Nebraska, US.

2. The Domain Names and Registrars

The disputed domain names <email-zionsbankpf.com> and <notifications-zionsdirect.com> (the “Domain Names”) are registered with CSC Corporate Domains, Inc. (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 Names. On April 10, 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 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 19, 2017.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 6, 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 owns US Registration Nos. 2,381,006 for the service mark ZIONS BANK (registered on August 29, 2000); 2,531,436 for the service mark ZIONSBANK.COM (registered on January 22, 2002); and 3,180,413 for the service mark ZIONS DIRECT (registered on December 5, 2006) (collectively, the “ZIONS Marks” or the “Marks”). As per documents of record, Zions Bancorporation, Complainant’s parent, originally applied for and obtained those registrations, but they subsequently assigned the registrations and related rights in the ZIONS Marks to Complainant who uses them. The Marks are registered for a long list of financial services.

Since July 5, 1995, Zions Bancorporation, also has been the registrant of the domain name <zionsbank.com>, from which Complainant advertises and offers its banking services. Complainant does business under the name Zions First National Bank, and has been doing business under that name since June 12, 1890. Since December 4, 1997, Zions Bancorporation, has also been the registrant of the domain name <zionsdirect.com>, from which a subsidiary of Complainant advertises and offers its investing services. The subsidiary of Complainant does business under the name Zions Direct, and has been doing business under that name since February 7, 1986.

The Domain Name <email-zionsbankpf.com> was registered on January 3, 2012, and the Domain Name <notifications-zionsdirect.com> was registered on September 13, 2012. The Domain Name <notifications-zionsdirect.com> redirects to a website that solicits users to submit sensitive information such as company name, user name and password. The Domain Name <email-zionsbankpf.com> appears to be inactive.

5. Parties’ Contentions

A. Complainant

A comparison of the Domain Names and the ZIONS Marks shows that the identical marks are included in the Domain Names. In front of the ZIONS BANK Mark, Respondent added “email-” and following the Mark a “pf” was added. In front of the ZIONS DIRECT Mark, Respondent added “notifications-”. Complainant’s Marks are clearly recognizable within the Domain Names. Furthermore, adding the words exacerbate confusing similarity. In particular, adding the term “email” in front of the ZIONS BANK Mark and the term “notifications” in front of the ZIONS DIRECT Mark alludes to emails and notifications that Complainant could send. The Domain Names may likely have been registered to provide Respondent the means to send correspondence to customers or potential customers of Complainant to confuse such customers as to the source of the correspondence and to solicit personal information from Complainant’s customers for malicious purposes. The page associated with the Domain Name <notifications-zionsdirect.com> directs consumers to an unsecure website that solicits users to submit their company name, user name, and password, and likely confuses consumers as to the source requesting such information and may cause Complainant’s customers to submit information for Respondent to login and gain access to Complainant’s customer’s personal bank accounts.

Complainant has been using its ZIONS Mark in commerce since at least as early as 1891, and obtained federal registration for such mark on August 29, 2000. Complainant has been using its ZIONS BANK Mark in commerce since at least as early as 1992, and obtained federal registration for such mark on August 29, 2000. Complainant has been using its ZIONSBANK.COM Mark in commerce since at least as early as 1995, and obtained federal registration for such Mark on January 22, 2002. Complainant has been using its ZIONS DIRECT Mark in commerce since at least as early as 2004, and obtained federal registration for such Mark on December 5, 2006. Respondent registered the “email” Domain Name no earlier than March 1, 2012, and the “notification” Domain Name no earlier than September 13, 2011. Before filing this Complaint, Complainant has not been aware of any evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Names, or a name corresponding to the Domain Names with a bona fide offering of goods or services. Instead, the “notification” Domain Name resolves to an unsecure website that solicits users to submit their company name, user name, and password, which may cause Complainant’s customers to submit information for Respondent to improperly and illegally login and gain access to Complainant’s customers personal bank accounts. Use of a domain name to post parking and landing pages may in some cases be permissible, but a parking page does not by itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. Complainant is not aware that Respondent, as an individual, business, or other organization, has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights. Respondent is not making a legitimate noncommercial or fair use of the Domain Names. Respondent is not a licensee of Complainant’s trademarks, and has not otherwise obtained authorization to use the Marks. Respondent is not using the Domain Names as part of a bona fide offering of goods or services, or for a legitimate noncommercial use.

Respondent registered the confusingly similar Domain Name <email-zionsbankpf.com> that includes the ZIONS Mark, the dominant part of the ZIONS BANK Mark and the ZIONSBANK.COM Mark. Respondent registered the confusingly similar Domain Name <notifications-zionsdirect.com> that includes the ZIONS Mark and ZIONS DIRECT Mark. The use of virtually identical or similar marks in the Domain Names indicates that they were registered primarily for the purpose of disrupting Complainant’s business, and it appears to be intended to take advantage of the goodwill associated with the ZIONS Marks. By creating a likelihood of confusion with the Marks Respondent is clearly trying to exploit the goodwill of Complainant and its Marks by either (i) diverting customers of Complainant from Complainant’s website to Respondent’s website or (ii) confusing customers of Complainant through the delivery of correspondence, for commercial gain or malicious purposes.

The Domain Name <notifications-zionsdirect.com> resolves to an unsecure website that solicits users to submit their company name, user name, and password, which may cause Complainant’s customers to submit information for Respondent to improperly and illegally login and gain access the their personal bank accounts. The use of the ZIONS Marks in the Domain Names is deceptive and misleading and may divert consumers to these websites, particularly the website associated with the Domain Name
<notifications-zionsdirect.com> instead of Complainant’s official and authorized website.

The ZIONS Marks were well known and in wide use when Respondent registered the Domain Names. By combining them with generic terms, Respondent knew or should have known about Complainant’s Marks when it registered the Domain Names. Respondent’s use of the Marks may tarnish them. Although in some cases the use of a domain name that resolves to a parking or landing page may be permissible, that is not the case in this matter where the links are to competitive products and services of Complainant. The apparent lack of active use of a domain name does not prevent a finding of bad faith.

Complainant, or its affiliates, has prevailed on several prior UDRP complaints for domain names that include Complainant’s registered marks, and that are similar to the Domain Names. In these matters, the UDRP panels found bad faith registration and use of the domain name at issue, and awarded a transfer of it to Complainant. Each of the domain names should be given consideration for consistency.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) The respondent’s domain name is identical or confusingly similar to a trademark 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 respondent’s domain name has been registered and is being used in bad faith.

Each of these elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant holds rights in the ZIONS Marks by virtue of its and its predecessor’s long-standing use of the Marks, as well as US Registration Nos. 2,381,006 for the service mark ZIONS BANK (registered on August 29, 2000); 2,531,436 for the service mark ZIONSBANK.COM (registered on January 22, 2002); and 3,180,413 for the service mark ZIONS DIRECT (registered on December 5, 2006).

UDRP panels have consistently held that if a domain name “wholly incorporates a complainant’s trademark”, it is sufficient evidence that the domain name is identical or confusingly similar. See, e.g., Intesa Sanpaolo S.p.A. v. Tommy, Bartles associates, WIPO Case No. DCO2015-0001. The Domain Name <email-zionsbankpf.com>, wholly incorporates the ZIONS BANK Mark thus, it is confusingly similar to that Mark. Adding the elements “email-” and “pf” to the ZIONS BANK Mark do not diminish the confusing similarity with the Domain Name. Similarly, the Domain Name <notifications-zionsdirect.com>, wholly incorporates the ZIONS DIRECT Mark thus, it is confusingly similar to that Mark. Adding the term “notifications” to the ZIONS DIRECT Mark does not diminish the confusing similarity with the Domain Name. Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511. Indeed, the public, particularly Complainant’s customers, could interpret the combination of the ZIONS BANK and ZIONS DIRECT Marks with the added terms “email-“ and “notifications-“ respectively, as official and specialized sites of Complainant.

Furthermore, the Top-Level portion of a domain name is generally disregarded when determining whether a domain name is identical or confusingly similar. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.11.

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that: (1) before filing this Complaint, it was not aware of any evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Names, or names corresponding to the Domain Names in connection with a bona fide offering of goods or services. Instead, at least one of the Domain Names (<notifications-zionsdirect.com>) resolves to an unsecure website soliciting users to submit personal/corporate information, which may cause Complainant’s customers to submit confidential information for Respondent to improperly and illegally login and gain access to their bank accounts; (2) it is not aware that Respondent has been commonly known by the Domain Names, even if it did not acquire any trademark or service mark rights in them; (3) Respondent is not a licensee of the Marks or otherwise authorized to use the Marks for any purpose; and (4) Respondent is not making a legitimate noncommercial or fair use of the Domain Names.

Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Names.

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and is using the Domain Names in bad faith. It is uncontroverted that Complainant's use of the Marks in commerce and the related trademark registrations predate (see, e.g., section 4 above) when Respondent registered the Domain Names. Combining the Marks with generic terms (i.e., “email-” and “notifications-”), that the public may perceive as having an official imprimatur evidences that it is more likely than not that Respondent knew about Complainant and its Marks when Respondent registered the Domain Names. These facts, further coupled with the facts that Respondent has no rights or legitimate interests in the ZION Marks, yet it incorporated the entirety of the Marks in the Domain Names and, in the case of the <notifications-zionsdirect.com> Domain Name, Respondent is using the associated website to take advantage of Complainant’s customers. Based on these facts the Panel is lead to conclude that Respondent knew of Complainant and Complainant's rights in the Marks when it registered the Domain Names.

The evidence provided by Complainant indicates that Respondent has been using the Domain Names in bad faith. Using the confusingly similar Domain Name <notifications-zionsdirect.com>, Respondent has been goading Complainant’s customers to provide confidential and personal information (e.g., company name, user name and password) to gain improper access to those customers’ personal bank accounts. Respondent could use such information for commercial gain and/or malicious purposes.

With regard to the Domain Name <email-zionsbankpf.com>, Respondent is now passively holding that Domain Name. There is no plausible reason for Respondent's selection of the Domain Name other than as a deliberate attempt to profit unfairly from confusion with the Marks. See, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (“the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith"); Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (finding bad faith when the registration of domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”).

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <email-zionsbankpf.com> and <notifications-zionsdirect.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: June 17, 2017

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