WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A. v. Pamela Dalton, Opricko MTG
Case No. D2017-1441
1. The Parties
Complainant is ZB, N.A. of Salt Lake City, Utah, United States of America ("United States"), represented by TechLaw Ventures, PLLC, United States.
Respondent is Pamela Dalton, Opricko MTG of Jupiter, Florida, United States.
2. The Domain Names and Registrar
The disputed domain names <amegysbank.com> and <zionbancorps.com> are registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 27, 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 August 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 1, 2017.
The Center appointed Andrew Mansfield as the sole panelist in this matter on September 12, 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 in this administrative proceeding is ZB, N.A., a national banking association, dba Zions First National Bank ("Zions") and dba Amegy Bank ("Amegy"). The Complaint concerns two disputed domain names. The first, the Zions disputed domain name, is <zionbancorps.com>. The second, the Amegy disputed domain name, is <amegysbank.com>. The Zions disputed domain name was registered on July 10, 2017. The Amegy disputed domain name was registered on July 12, 2017. The disputed domain names resolve to pay-per-click websites.
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; ZIONSBANK.COM, registration no. 2,531,436; and ZIONS, registration no. 2,380,325. Zions Bancorporation, the parent company of Complainant, was the original applicant and registrant of these trademarks, but Zions Bancorporation subsequently assigned these marks to Complainant. These registered marks are in use by Complainant in a wide variety of financial services.
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 is also the owner of the following trademarks registered with the USPTO: AMEGY, registration no. 3,269,288; AMEGY BANK, registration no. 2,979,655; and AMEGYBANK (Stylized), registration no. 3,105,196. Amegy Bank National Association was the original applicant and registrant of these trademarks, but Amegy Bank National Association subsequently assigned these marks to Complainant.
Complainant has been using its AMEGY mark in commerce since at least as early as January 26, 2005, and obtained federal registration for such mark on July 24, 2007. Complainant has been using its AMEGY BANK mark in commerce since at least as early as January 26, 2005, and obtained federal registration for such mark on July 26, 2005. Complainant has been using its AMEGYBANK (Stylized) mark in commerce since at least as early as January 26, 2005, and obtained federal registration for such mark on June 13, 2006.
5. Parties' Contentions
Complainant argues that the Zions disputed domain name and the Amegy disputed domain name are confusingly similar to its trademarks. The Zions disputed domain name contains Complainant's registered mark ZIONS BANK but drops the letter "s" in "zions" and adds "bancorps" in the place of "bank".
Complainant also asks the Panel to engage in a side-by-side comparison of the Amegy disputed domain name and Complainant's registered marks AMEGY and AMEGY BANK and the dominant part of AMEGYBANK (Stylized). This comparison, Complainant indicates, shows that the registered marks are included and recognizable in the Amegy disputed domain name with the addition of the letter "s" in between the terms "amegy" and "bank."
Complainant asserts that the threshold test for confusing similarity under the UDRP involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. Where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive, geographical, pejorative, meaningless, or other terms would not prevent a finding of confusing similarity under the first element. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 1.7 and 1.8. In this case, Complainant's registered trademarks are clearly recognizable within the Amegy disputed domain name and the Zions disputed domain name.
Complainant provides evidence that the Zions disputed domain name and the Amegy disputed domain name take users to a website that references various banking terms and contains links to a variety of random goods and services, including competing financial services. Complainant alleges the use of the two disputed domain names is a form of typosquatting. One disputed domain name drops an "s" and the other disputed domain name adds an "s" to Complainant's trademarks. The Zions disputed domain name also replaces "bank" with the similar "bancorps."
Complainant argues that Respondent has no rights or legitimate interests in either of the two disputed domain names. Complainant indicates it is not aware of any evidence of Respondent's use of either of the disputed domain names in connection with a bona fide offering of goods or services. Complainant asserts that it is not aware that Respondent has been known either by the name Zion or by Amegys. Respondent is not, according to Complainant, making a legitimate noncommercial or fair use of the trademarks. Respondent is not, finally, a license holder using the trademarks with permission, Complainant concludes.
Complainant presents a series of arguments about why the registration and use of each disputed domain name was in bad faith. These include arguments that Respondent is exploiting the goodwill associated with Complainant's marks, creating a likelihood of confusion with the services linked from the parked pages, and the fact that Complainant's marks were well-known and in wide use when Respondent registered the disputed domain names.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding Complainant must prove that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark of Complainant; (ii) Respondent has no rights or legitimate interests in respect to the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The Panel agrees with Complainant that the Zions disputed domain name is confusingly similar to various trademarks associated with Zions Bank or the brand Zions. The Panel also agrees that the Amegy disputed domain name is confusingly similar to the various trademarks associated with Amegy Bank and Amegy. The top-level domain name is not, of course, used in such a comparison.
The first element of the Policy has been met.
B. Rights or Legitimate Interests
The Panel does not lightly or automatically find that Respondent has no rights or legitimate interests. Even when a respondent fails to participate in a UDRP dispute, the complainant is required to make out at least a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to demonstrate rights or legitimate interests under the Policy. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is deemed to have satisfied the second element of the Policy.
Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant indicates Respondent was not licensed or authorized to use the trademark at issue or any variation thereof. Respondent has not, as far as Complainant can find, been commonly known by a name identical or similar to the disputed domain names. Finally, the current use alleged by Complainant is not a legitimate noncommercial or fair use of the trademarks. Respondent has not come forward with any appropriate allegations or evidence in this regard. Based on the evidence presented, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names.
The second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
The Policy provides guidance on activities that might be considered evidence of bad faith registration and use of a domain name. That guidance is found in paragraph 4(b) of the Policy. Circumstances are described in paragraph 4(b) that might lead a panel to conclude that the registration and use of a disputed domain name is in bad faith. The description of the circumstances are addressed to the respondent. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
For all the below reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
Among the various reasons set forth by Complainant, the Panel is satisfied that Respondent is either directly profiting from "click through" traffic at the two websites or a "parking", "hosting", or "auction" authority is benefitting from such traffic. Complainant introduced evidence that each of the disputed domain names leads to web pages with links to various services, products, or searches that lead to such services or products. If the material was generated by Respondent, this is indicative of bad faith. If the links or content are generated by a third party, Respondent may still be found to have engaged in bad faith in registering and using the disputed domain names.
It is generally accepted that the linking of a domain name to a web page which contains third party material, even if automatically generated, can support a finding of bad faith. SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497. The panel in this decision indicated that "it is well established that where a domain name is used to generate revenue in respect of 'click through' traffic, and that traffic has been attracted because of the name's association with the Complainant, such use amounts to use in bad faith." The panel referred to a series of cases in support of this proposition, including Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396. This Panel agrees that revenue will be generated by such visitors clicking on the provided links and it does not matter whether that revenue accrues to Respondent or the operator of the parking site.
It appears that Respondent may have disabled the websites or the links from the disputed domain names prior to this decision. That is not of import. Complainant introduced evidence the two disputed domain names were used in this manner at the time the Complaint was filed.
The third element of the Policy has, therefore, been met.
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 names <amegysbank.com> and <zionbancorps.com> be transferred to Complainant.
Date: September 18, 2017