WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A., a national banking association, dba Zions First National Bank v. Deng Guo Sen
Case No. D2017-0717
1. The Parties
The Complainant is ZB, N.A., a national banking association, dba Zions First National Bank of Salt Lake City, Utah, United States of America (“USA”), represented by TechLaw Ventures, PLLC, USA.
The Respondent is Deng Guo Sen of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <ziomsbank.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2017. On April 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 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.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2017.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on May 17, 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 is ZB, N.A., dba Zions First National Bank, a national banking association of the USA.
The Complainant is the owner of the following trademarks registered with the United States Patent and Trademark Office (USPTO): ZIONS BANK, registration No. 2,381,006, registered on August 29, 2000; ZIONSBANK.COM, registration no. 2,531,436, registered on January 22, 2002 and ZIONS, registration No. 2,380,325, registered on August 29, 2000.
According to the uncontested allegations of the Complainant, Zions Bancorporation, the parent of the Complainant, was the original applicant and registrant of these trademarks, but it subsequently assigned these marks to the Complainant. These registered marks are in use by the Complainant and registered for financial services namely banking and other services.
Since July 5, 1995 Zions Bancorporation, the parent of the Complainant, has been the registrant of the domain name <zionsbank.com>, from which the Complainant advertises and offers its banking services, according to the uncontested allegations of the Complainant.
The disputed domain name <ziomsbank.com> was registered on March 17, 2016. The disputed domain name directs consumers, either directly or indirectly, to a pay-per-click website which may confuse consumers as to the source of the goods being offered under the Complainant’s marks.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The irrespective of the default in this case, the Complainant has the burden of proof according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel can’t merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has presented evidence to demonstrate that it owns registered trademark rights in the mark ZIONS BANK, and that it has been actively using these trademarks.
The mere fact that the Respondent has registered the disputed domain name with the difference of one letter “m” in place of “n” (<ziomsbank.com> instead of <zionsbank.com>), does not to this Panel affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252; Nationwide Mutual Insurance Company v. Whois Agent, Whois Privacy Protection Service, Inc./Zhichao Yang, WIPO Case No. D2015-1129; Facebook, Inc., v. on behalf of customers, WIPO Case No. D2016-0244.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <ziomsbank.com> is confusingly similar to the Complainant’s trademark ZIONS BANK.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a respondent’s right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: the Respondent is not making a bona fide offering of its goods.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights: In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue: Again, in this case there is no such indication from the record.
The Respondent does not seem to have any trademark registrations including the term “zions” or “zioms”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a) (ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s argumentation on this point is mainly based on the circumstances mentioned in paragraph 4(b)(iv) of the Policy in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In reviewing the present case, it appears that the Respondent has registered the disputed domain name in bad faith.
The Panel finds it highly unlikely that the Respondent would register randomly and unintentionally a domain name that is a single letter variation of the Complainant’s ZIONS BANK trademark. Rather, on a reasonable examination of the evidence, it seems to this Panel more likely that such registration and use would be motivated by a hoped-for capitalization, i.e., commercial gain from the Complainant’s reputation in its mark.
Further, according to the uncontested allegations of the Complainant, the disputed domain name at the time of filing the Complaint was used for a pay-per-click page to divert customers of the Complainant from the Complainant’s website to the third-party websites, some that compete with the Complainant, for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks. Such use of the Complainant’s trademark by the Respondent is evidence of bad faith.
The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ziomsbank.com> be transferred to the Complainant.
Christos A. Theodoulou
Date: May 24, 2017