WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ZB, N.A., a national banking association, dba Zions First National Bank v. Domain Admin, C/O ID#10760, Privacy Protection Service Inc d/b/a PrivacyProtect.org / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd

Case No. D2017-0806

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, , represented by TechLaw Ventures, PLLC, United States of America.

Respondent is Domain Admin, C/O ID#10760, Privacy Protection Service Inc d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd of Chitre, Panama.

2. The Domain Name and Registrar

The disputed domain name <zionsbank.org> 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 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.

The original Complaint in this proceeding concerned two domain names, the disputed domain name and <zionsbank.pw>, but following receipt of the registrar verification (see below), it came to the Center’s attention that the disputed domain name was the only one being held in the name of Respondent. Complainant chose to withdraw the domain name <zionsbank.pw> from the current proceeding and subsequently make that domain name subject of another complaint directed at a different registrant.

On April 24, 2017, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 1, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 8, 2017.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on May 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2017.

The Center appointed Roberto A. Bianchi as the sole panelist in this matter on June 21, 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 has been doing business under the name Zions First National Bank since 1890.

Complainant owns the following trademarks registered with the USPTO:

- ZIONS, Registration No. 2,380,325, Registration Date August 29, 2000, filed on April 10, 1998, for financial services, namely banking, securities brokering, mortgage lending and banking, etcetera, in International Class 36, stating as date of first use / first use in commerce May 13, 1891.

- ZIONS BANK, Registration No. 2,381,006, Registration Date August 29, 2000, filed on May 10, 1999, for financial services, namely banking, mortgage lending and banking, etcetera, in International Class 36, stating as date of first use / first use in commerce July 12, 1992.

- ZIONSBANK.COM, Registration No. 2,531,436, Registration Date January 22, 2002, filed on March 30, 2000, for financial services, namely banking, etcetera, in International Class 36, stating as date or first use / first use in commerce July 5, 1995.

Zions Bancorporation, the parent company of Complainant’s group, offers banking services on a website at the domain name <zionsbank.com>.

According to the WhoIs database of the Registrar, the record for the disputed domain name was registered on July 15, 2005.

Presently, the webpage at the disputed domain name displays a webpage with pay-per-click links that according to Sedo, was generated by the registrant of the domain name by using the Sedo Domain Parking service.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is confusingly similar to Complainant’s marks ZIONS BANK, ZIONSBANK.COM and ZIONS. The disputed domain name includes the dominant part of Complainant’s mark ZIONSBANK.COM, with the sole difference being the use of the generic Top-Level Domain (“gTLD”) “.org” instead of “.com.”

Respondent has no rights or legitimate interests in the disputed domain name. 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. Based exclusively on the WhoIs database information, Respondent acquired the registration for the disputed domain name no earlier than July 15, 2005. Before filing the Complaint, Complainant has not been aware of any evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Instead, the disputed domain name resolves to a website that is displaying Complainant’s marks and links to competing financial services. 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 disputed domain name, even if Respondent has acquired no trademark or service mark rights. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Respondent is not a licensee of Complainant’s trademarks, and has not otherwise obtained authorization to use Complainant’s marks.

Respondent registered and is using the disputed domain name in bad faith. The use of virtually identical or similar marks in the disputed domain name indicates that this domain name was registered primarily for disrupting the business of Complainant, and appears to be intended to take advantage of the goodwill associated with Complainant’s trademarks. By creating a likelihood of confusion with Complainant’s identical registered marks, Respondent is clearly trying to exploit the goodwill of Complainant and its trademarks by diverting customers of Complainant from Complainant’s website to Respondent’s website for commercial gain or malicious purposes. By including Complainant’s identical registered trademarks in the disputed domain name, Respondent is intentionally creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. The disputed domain name resolves to a website that displays Complainant’s trademarks, and links to competing financial services. This use of Complainant’s marks is misleading and may divert consumers to this website instead of Complainant’s official and authorized website.

Bad faith registration of a domain name can be found when the respondent “knew or should have known” about the existence of the complainant’s trademarks, especially where the complainant’s marks are well known or in wide use at the time the domain name was registered. Complainant’s registered marks were well known and in wide use at the time the disputed domain name was registered. By including Complainant’s identical marks ZIONS and ZIONS BANK, and the dominant part of ZIONSBANK.COM, in the disputed domain name, Respondent knew or should have known about Complainant’s registered marks at the time it registered the disputed domain name.

Respondent is responsible for the content appearing on the website associated with the disputed domain name, even in this case where Respondent’s websites posts advertising links on an “automatically” generated basis. Respondent has apparently not made any good faith efforts to prevent the inclusion of advertising links on such website.

Because Respondent’s websites are accessed using the disputed domain name that includes Complainant’s trademarks, or the dominant part of Complainant’s registered trademarks, this use of the disputed domain name is misleading. Respondent may also use it in connection with various phishing and fraudulent activities. Respondent’s use of Complainant’s marks may tarnish Complainant’s trademarks.

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. The use of the disputed domain name to resolve to websites that may contain malware, or may include competitive products and services of Complainant, could tarnish the trademarks of Complainant and otherwise constitutes bad faith registration and use.

The disputed domain name has been registered using a private or proxy service. Although this factor by itself may not be sufficient to form the basis of bad faith registration, when combined with other factors addressed in this Complaint, it is an indication of bad faith registration.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting printouts of the United States Patent and Trademark Office (“USTPO”) database, Complainant has satisfied the Panel that it owns trademark rights in the ZIONS, ZIONS BANK, and ZIONSBANK.COM marks. See section 4 above.

The Panel notes that in the disputed domain name the ZIONS BANK mark is incorporated in its entirety, with the sole addition of the gTLD “.org”. It is well established that the addition of a gTLD and the suppression of spaces are technically necessary for the creation of domain names, and should be generally disregarded when assessing identity or confusing similarity. Consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark ZIONS BANK.

The first requirement of paragraph 4(a) of the Policy is thus met.

B. Rights or Legitimate Interests

Complainant contends that there is no evidence that before filing the Complaint Respondent has made any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Instead, the disputed domain name resolves to a website that is displaying Complainant’s marks and links to competing financial services. Respondent is not a licensee of Complainant’s trademarks, and has not otherwise obtained authorization to use Complainant’s marks. Although use of a domain name to post parking and landing pages may in some cases be permissible, 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 disputed domain name. Lastly, Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name

In the Panel’s view, the available evidence supports these contentions of Complainant. The website at the disputed domain name contains links that appear to refer to Complainant but that in fact redirect to websites of providers of goods and services other than banking services, such as free file conversion software, the website “www.facebook.com”, “www.gamespot.com”, “www.cbsnews.com”, online dating, etcetera, or to other providers of financial services, i.e., to competitors of Complainant. This is evidence of Respondent’s intent to generate click-through income, by deceiving Internet users – presumably looking for Complainant and its banking services – by the slavish reproduction of Complainant’s ZIONS BANK mark in the disputed domain name.

Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s mark in accordance with Policy paragraph 4(c)(iii). See Air Austral v. WWW Enterprise, Inc., WIPO Case No. D2004-0765 (“The Complainant asserts that the Respondent is not and has never been commonly known as AIRAUSTRAL and has no connection whatsoever to the Complainant or its trademarks. The Complainant also focuses on the fact that the domain name was used initially for a directory-based website with a pay-per-click revenue model which is likely to have confused and diverted Internet users to the commercial websites of others in a similar field to the Complainant and subsequently has been pointed to a blank web page. The Panel agrees with the Complainant that neither of these uses constitutes a bona fide offering of goods or services under the paragraph 4(c)(i) of the Policy, or a legitimate non-commercial or fair use under paragraph 4(c)(iii) of the Policy.”).

The Panel also notes that according to the Registrar, the registrant of the disputed domain name is “Domain Admin”, and that there is no evidence that Respondent is or was ever known, commonly or otherwise, by the disputed domain name, pursuant to Policy paragraph 4(c)(ii).

In sum, Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to Respondent to provide arguments and evidence in its own favor. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. (“[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”)

For the above reasons, and considering that Respondent failed to provide any arguments or evidence in its own favor, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the registration dates of Complainant’s trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM predate the registration of the disputed domain name by several years. See section 4 above. In addition, the website at the disputed domain name, which slavishly reproduces Complainant’s ZIONS BANK mark, contains numerous links containing the “Zions Bank” term and/or other terms related to financial services, i.e., the field of business conducted by Complainant and its group of companies. These facts indicate that Respondent knew of, and had Complainant, its banking and financial services and its ZIONS, ZIONS BANK and ZIONSBANK.COM marks in mind at the time of the registration of the disputed domain name.

The Panel also notes that, as seen above, Respondent is using the disputed domain name in a website displaying links unrelated to Complainant and listed presumably with the purpose of generating click-through income for Respondent. This use of the disputed domain name reveals bad faith. See Nintendo of America, Inc. v. Pokemonplanet.net, Jerry Radl, and Fusion Media Solutions, Inc., WIPO Case No. D2001-1020 (“The format of the site (and the <pokemonplanet.com> site) strongly suggests that they obtained “click-through” revenues from the site, […] another improper use of the Complainant’s mark for commercial purposes. See Policy, paragraph 4(b)(iv).” “A website owner is paid click-through advertising revenues from having visitors to a website subsequently click on a link or banner advertisement which leads the visitor to a second website. Shields v. Zuccarini, 89 F. Supp. 2d 634, 640 (E.D. Pa. 2000) (the latter reference includes the court’s observation that use of a famous mark for click-through revenue is “exactly the type of conduct the [Anticybersquatting Consumer Protection Act] is designed to prevent”)”); see also Nokia Corp. v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 (“click-through scheme described as a “free ride” on Complainant’s marks”).

In addition, the Panel notes that the courier entrusted with the delivery of the Notice of Complaint to Respondent reported that the address on the airway bill is incomplete or wrong. Further, Respondent failed to provide the slightest explanation for its registration and use of the disputed domain name.

Taken together, all these facts and circumstances lead the Panel to find that Respondent registered and is using the disputed domain name in bad faith.

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 disputed domain name, <zionsbank.org>, be transferred to Complainant.

Roberto A. Bianchi
Sole Panelist
Date: July 5, 2017