WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A., a national banking association, dba National Bank of Arizona v. Whois Privacy Protection Service by onamae.com / Yuji Iwaki
Case No. D2018-1585
1. The Parties
The Complainant is ZB, N.A., a national banking association, dba National Bank of Arizona of Salt Lake City, Utah, United States of America ("USA"), represented by TechLaw Ventures, PLLC, USA.
The Respondent is Whois Privacy Protection Service by onamae.com of Tokyo, Japan / Yuji Iwaki of Saitama, Japan, self-represented.
2. The Domain Name and Registrar
The disputed domain name <nbaz.xyz> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2018. On July 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2018, 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 the Complainant on July 20, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 21, 2018.
On July 20, 2018, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on July 21, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Japanese of the Complaint, and the proceedings commenced on July 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2018. On August 1, 2018, the Respondent submitted an email in Japanese offering to transfer the disputed domain name to the Complainant or cancel the disputed domain name. The Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by August 9, 2018. The Complainant requested to suspend the proceeding on August 2, 2018. Accordingly, the Center notified the Parties that the proceeding would be suspended until September 1, 2018. On August 17, 2018, the Complainant requested to reinstitute the proceeding. On August 20, 2018, the Center informed the Parties that the proceeding is reinstituted and the Center would proceed with panel appointment.
On August 20, 2018 and August 25, 2018, the Respondent submitted further two informal emails. According to the email on August 20, 2018, the Respondent stated in Japanese that, since he/she could not understand the situation, he/she wanted to have a phone call from a Japanese staff. And, according to the email on August 25, 2018, he/she stated in English as follows: "I decide my mind. I have plan Domain <nbaz.xyz>. I can sell 10,000 USD. Agree or disagree? Agree. -> tell you bank number. Disagree -> the end. Iwaki."
The Center appointed Masato Dogauchi as the sole panelist in this matter on August 29, 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 does business under the name National Bank of Arizona, and it, or its predecessor in interest, has been doing business under that name since May 6, 1996.
The Complainant is the owner of the following trade marks registered with the United States Patent and Trademark Office: NB|AZ, registration no.3,916,017, registered on February 8, 2011, and NATIONAL BANK OF ARIZONA, registration no.2,914,624, registered on December 28, 2004. These registered marks are in use by the Complainant and registered for "banking services, namely, banking, investment banking services, mortgage banking and online banking services and financial services, namely, financial management, money lending, financial information processing, financial research, financial analysis and consultation, financial planning, investment fund transaction services, wealth management services, mortgage planning, and credit and debit card services."
Since June 27, 2005 and May 6, 1996, Zions Bancorporation, the parent of the Complainant, has been the registrant of the domain names <nbaz.com> and <nbarizona.com>, respectively, from which the Complainant advertises and offers its banking services.
The disputed domain name was registered on July 8, 2018 and resolves to an inactive website.
5. Parties' Contentions
A side-by-side comparison of the disputed domain name and the Complainant's registered mark NB|AZ shows that the identical mark is included and recognizable in the disputed domain name with the addition of a non-alphanumeric character "|".
The addition of the new generic Top-Level Domain ("gTLD") ".xyz" should be disregarded under the confusing similarity test.
The Respondent is not a licensee of the Complainant's trade marks, and has not otherwise obtained authorization to use the Complainant's marks. The Respondent is not using the disputed domain name as part of a bona fide offering of goods or services, or for a legitimate noncommercial use. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Respondent has no rights or legitimate interests in the disputed domain name.
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 trade marks, especially where the complainant's marks are widely known (including its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark. The Complainant's registered marks were well-known and in wide use at the time the disputed domain name was registered. The use of the Complainant's marks in the disputed domain name is misleading and may divert consumers to the Respondent's website.
In addition, since it appears that the disputed domain name has been registered using a private or proxy service merely to avoid being notified of a UDRP proceeding filed against the Respondent, this supports an inference of bad faith registration. Using false contact information or an additional privacy or proxy service is further indication of bad faith registration.
The Respondent did not formally reply to the Complainant's contentions, but submitted an email to the effect that he/she wanted to sell the disputed domain name for USD 10,000 on August 25, 2018.
6. Discussion and Findings
6.1 Language of Proceedings
In respect of the language to be used in the administrative proceeding, in accordance with the Rules, paragraph 11(a), the language of the administrative proceeding shall be, in principle, the language of the registration agreement. However, the proviso of the same provision allows the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Panel determines that the language of this proceeding shall be English rather than Japanese on the following grounds:
- The Complainant requested to that effect;
- Although the Respondent submitted an email in Japanese on August 1, 2018 in response to the formal notification by the Center in English and Japanese of the Complaint, and on August 20 it submitted another email in Japanese, it submitted an email in understandable English on August 20, 2018; and
- The use of Japanese language would produce undue burden on the Complainant in consideration of the Respondent's emails on August 1, 2018 and 20, 2018 to the effect that it did not dispute the substantive matters of the case but proposed sale of the disputed domain name.
6.2 Substantive Issues
In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantive arguments in this case, the following decision is rendered on the basis of the Complainant's contentions and other evidence submitted by the Complainant.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark, NB|AZ, and that the parent company of the Complainant has been the registrant of the domain name <nbaz.com> since June 27, 2005 from which the Complainant advertises and offers its banking services.
The disputed domain name includes the Complainant's registered mark NB|AZ. The addition of the gTLD ".xyz" does not have any impact on the overall impression in determining confusing similarity. The only difference between the Complainant's registered mark and the disputed domain name is the addition of character "|" in the former. Such unmeaning addition does not alter the impression.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trade mark in which the Complainant has rights and the above requirement provided for in paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
There is no evidence at all that shows the Respondent is commonly known by the name "nbaz" and that the Respondent is affiliated with the Complainant, or authorized or licensed to use the NB|AZ trade mark.
The word "nbaz" has no meaning in Japanese language, and there found no reasonable relationship between the Respondent and the word "nbaz" at all.
Since the Respondent did not reply to the substantive issue in this proceeding, and the Complainant's prima facie case is unrebutted, the Panel finds on the available record that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the above requirement provided for in paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
ln consideration of the Complainant's business using the NB|AZ trade mark and the word "nbaz" has no meaning in Japanese, it is highly unlikely that the Respondent would not have known of the Complainant's rights in the trade mark at the time of the disputed domain name's registration. ln addition, in light of the fact that nothing in the disputed domain name bears a reasonable relevance to the name or other characteristics of the Respondent, there can be found no reasonable possibility of fortuity in the Respondent's registration and use of the disputed domain name. The disputed domain name is almost identical to the NB|AZ trade mark and there is no explanation on why the Respondent has registered the disputed domain name.
With regard to the requirement that the disputed domain name is being used in bad faith, the panel notes that the Respondent submitted an email to the Center that it wanted to sell the disputed domain name for USD 10,000 on August 25, 2018. This is an apparent example of use of the domain name in bad faith. In addition, the Panel notes that the passive holding of the disputed domain name does not prevent the finding of use in bad faith.
Accordingly, the Panel finds that the disputed domain name has been registered in bad faith and is being used in bad faith and the above requirement provided for in paragraph 4(a)(iii) of the Policy is satisfied.
ln conclusion, all three cumulative requirements as provided for in paragraph 4(a) of the Policy are determined to be satisfied.
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 <nbaz.xyz> be transferred to the Complainant.
Date: August 31, 2018