WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A dba Zions First National Bank v. Above.com domain privacy / Host Master, Transure Enterprise Ltd
Case No. D2017-0804
1. The Parties
Complainant is ZB, N.A dba Zions First National Bank of Salt Lake City, Utah, United States of America (“US”), represented by TechLaw Ventures, PLLC, US.
Respondent is Above.com domain privacy of Beaumaris, Victoria, Australia, / Host Master, Transure Enterprise Ltd of Wilmington, Delaware, United States of America.
2. The Domain Name and Registrar
The disputed domain name <zionsbnk.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2017. On April 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 27, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 3, 2017.
The Center verified that the Complaint together with the amended 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 May 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 29, 2017.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on June 22, 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 a national banking association in the US.
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 August 29, 2000, first use 1992
ZIONSBANK.COM registration no. 2,531,436 registered January 22, 2002, first use 1995
ZIONS registration no. 2,380,325 registered August 29, 2000, first use 1891
Complainant does business under the name Zions First National Bank, and has been doing business under that name since June 12, 1890.
The disputed domain name was registered on April 27, 2009 and redirects to various types of websites.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established registered trademark rights in the terms ZIONS BANK, ZIONS and ZIONSBANK.COM. The disputed domain name incorporates the mark ZIONS in its entirety, and an abbreviation of the term “bank”.
The panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Based on previous UDRP decisions, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Complainant’s allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that Respondent has been commonly known by the disputed domain name. Respondent is not a licensee of Complainant’s trademarks and has not otherwise obtained authorization to use Complainant’s marks.
An Internet user mistakenly beeping “bnk” instead of “bank” would be directed to a website controlled by Respondent. The disputed domain name occasionally directs consumers either directly or indirectly to a Yahoo® Internet search page that references various banking terms and links to competing financial services. On other occasions, the disputed domain name redirects Internet users to a website that indicates the user’s computer has experienced an error, which may indicate a malicious intent by Respondent. This is not a bona fide offering of goods or services or a legitimate noncommercial use.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of registration and use of a domain name in bad faith. Circumstances that “shall be evidence” of bad faith include facts indicating an intentional attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with another’s mark as to the source, sponsorship, affiliation, or endorsement of the website.
The virtually identical nature of the disputed domain name to Complainant’s marks as well as the way it is used by the Respondent as described above indicate that the disputed domain name was registered primarily for the purpose of disrupting the business of Complainant, and intended to take advantage of the goodwill associated with Complainant’s registered trademarks by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website at the disputed domain name. In view of Complainant’s registered trademarks and longstanding use of the marks incorporated in the disputed domain name, Respondent knew or should have known about Complainant’s marks at the time it registered the disputed domain name.
The Panel finds that the disputed domain name has been registered and is being used 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, <zionsbnk.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Date: July 3, 2017