WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A., a national banking association, dba Zions First National Bank v. Compsys Domain Solutions Private Limited
Case No. D2017-2494
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 (“United States” or “US”), represented by TechLaw Ventures, PLLC, United States.
The Respondent is Compsys Domain Solutions Private Limited of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <zionbanks.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 December 15, 2017. On December 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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.
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 the Respondent of the Complaint, and the proceedings commenced on December 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2018.
The Center appointed J. Nelson Landry as the sole panelist in this matter on January 31, 2018. 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 the owner of the following US trademarks (hereinafter the “ZIONS Trademarks”):
US registration No. 2,381,006 for ZIONS BANK, registered on August 29, 2000;
US registration No. 2,531,436 for ZIONSBANK.COM, registered on January 22, 2002; and
US registration No. 2,380,325 for ZIONS, registered on August 29, 2000.
The Complainant has been using its ZIONS Trademarks in commerce since at least as early as 1891, and obtained federal registration for such trademark on August 29, 2000. The Complainant has been using its ZIONS BANK Trademark in commerce since at least as early as 1992, and obtained federal registration for such trademark on August 29, 2000. The Complainant has been using its ZIONSBANK.COM Trademark in commerce since at least as early as 1995, and obtained federal registration for such trademark on January 22, 2002.
The disputed domain name was registered on November 6, 2017. Currently, the disputed domain name resolves to a website displaying pay-per-click links to third party websites.
The Respondent is not a licensee of the Complainant’s Trademarks and has not otherwise obtained authorization or license from the Complainant to use the Complainant’s ZIONS Trademarks or to register the disputed domain name.
The Complainant or its affiliates have prevailed in over twenty five (25) UDRP proceedings during the period of 2014 to 2017 about domain names where the Complainant’s registered ZIONS Trademarks were confusingly similar to a disputed domain name incorporating the ZIONS Trademarks as registered or slightly modified as in the present case. For example, see ZB, N.A., dba Zions First National Bank of Salt Lake City v. Name West, WIPO Case No. D2017-0805.
5. Parties’ Contentions
The Complainant asserts to have been doing business under the name Zions First National Bank since June 12, 1890. The Complainant’s parent company, Zions Bancorporation, originally filed the ZIONS Trademarks registrations, but later transferred these to the Complainant. All referenced trademarks are registered for various financial services.
The Complainant , on the basis of a side-by-side comparison of the disputed domain name in with its three registered ZIONS Trademarks, noted that the ZIONS Trademarks are included and recognizable in the disputed domain name with the only difference being the transposition of the letter “s” following the term “bank” instead of “zions” which constitute confusing similarity to the ZIONS Trademarks and further added that the addition of gTLD term “.com” does not prevent a finding of confusing similarity. In considering such similarity, the Complainant contends that the Respondent is intentionally creating a likelihood of confusion with the Complainant’s Trademarks and is engaged in typosquatting to take advantage of Internet users seeking to find the Complainant’s domain name <zionsbank.com>.
The Complainant represents that prior to filing its Complaint it has not been aware of any evidence of the Respondent’s use of, or demonstrable reparations to use, the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods or services and further notes that to the contrary, the disputed domain name resolves to a website that is displaying the Complainant’s Trademarks and links to competing services. The Complainant states that it never licensed its ZIONS Trademarks nor authorized the Respondent to register the disputed domain name.
The Complainant states that it is not aware that the Respondent whether individual or business organization has been commonly known by the disputed domain name and is therefore not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Upon considering possible registration and use of the disputed domain name in bad faith, the Complainant submits that with the confusing similarity to its ZIONS Trademarks, the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant with the likely intention to take advantage of the goodwill associated with the Complainant’s ZIONS Trademarks.
The Complainant further submits that the Respondent is clearly trying to exploit the goodwill of the Complainant’s ZIONS Trademarks by diverting customers to the Respondent’s website which displays the Complainant’s ZIONS Trademarks and links to competitive services thereby misleading and diverting consumers to said websites. The Complainant represents that bad faith can be found when the Respondent “knew or should have known” about the existence of the Complainant’s widely-known Trademarks.
The Complainant concludes its claim of bad faith registration and use of the disputed domain name in stating that the use of the disputed domain name is misleading and is used by the Respondent in connection with various phishing and fraudulent activities. In this respect, the Complainant represents that UDRP panelists strive for consistency with prior decisions and seeks to ensure the UDRP operates in a fair and predictable manner. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.1. The Complainant states that itself or its affiliates has prevailed on several prior complaints for domain names that include its registered ZIONS Trademarks and similar domain names and listed twenty five (25) of such instances citing references and respective disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This is a classic case of typosquatting where a domain name is identical to a trademark except for the transposition of a letter. Here, the Trademarks are ZIONS, ZIONSBANK and ZIONSBANK.COM and the disputed domain name is <zionbanks.com>. The letter “s” in the Trademark has been removed from the terms “ zions” and transposed to the word “bank” in the disputed domain name.
In many UDRP cases such typosquatting has been held to constitute confusing similarity. See section 1.9 of the WIPO Overview 3.0 “A domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purposes of the first element.”
The Panel determines that the disputed domain name is confusingly similar to the Complainant’s ZIONS Trademarks.
The first criterion has been met.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the burden of production shifts to the Respondent to rebut such prima facie case by producing evidence of its rights or legitimate interests.
The Complainant asserts that it did not give license nor authorization to register the disputed domain name nor to use its ZIONS Trademark. There is no evidence that the Respondent was commonly known by the disputed domain name nor that the Respondent is making a legitimate noncommercial or fair use. To the contrary, the Panel notes that the Respondent’s use of the disputed domain name appears with the intent of commercial gain by misleadingly diverting consumers to the Respondent’s website associated with said disputed domain name.
The Panel therefore finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.
The second criterion has been met.
C. Registered and Used in Bad Faith
The Panel notes that the ZIONS Trademarks were registered and used by the Complainant or/and its affiliates for decades before the disputed domain name was registered months ago. With respect to the Respondent’s knowledge of the Complainant’s ZIONS Trademarks, the Panel considers the deliberate transposition of the letter “s” from the term “zions” in the Trademark to the end of the term “banks” in the disputed domain name shows that the Respondent knew of the Complainant and its ZIONS Trademarks rights and field of activities at the time of registration of the disputed domain name. The term “zions” is rather unique and the Panel is of the view that the Respondent might have been influenced by the numerous websites of other respondents present in the over twenty five (25) disputes involving the Complainant’s ZIONS Trademarks in the past four years. Thus, the Panel finds that the registration of the disputed domain name has been made in bad faith.
The Respondent’s use of the disputed domain name is, in this Panel’s view, also clearly in bad faith. The website at the address of the disputed domain name clearly misleads Internet visitors away from the Complainant along with possible diversion to websites associated with the competitors of the Complainant, which demonstrates that the Respondent was well aware of the field of business activities of the Complainant.
The modification of the location of the letter “s” of the ZIONS Trademarks in the disputed domain name creates a likelihood of confusion as found herein and misdirected visitors to the website may otherwise think that they are on a legitimate website if not one connected with the Complainant. In the Panel’s view, such activities reveal use in bad faith of the disputed domain name.
For the above reasons, the Panel concludes that there is bad faith registration and use of the disputed domain name and that the third criterion has 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 name <zionbanks.com> be transferred to the Complainant.
J. Nelson Landry
Date: February 5, 2018