WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zions Bancorporation, N.A. v. Domain Administrator, PrivacyGuardian.org / Tobe Uche
Case No. D2018-2930
1. The Parties
The Complainant is Zions Bancorporation, N.A. of Salt Lake City, United States of America (“United States”), represented by TechLaw Ventures, PLLC, United States.
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States / Tobe Uche, of Abuja, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <calbnt.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2018. On December 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 January 18, 2019 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 January 18, 2019. On January 19, 2019, the Respondent sent an email communication to the Center.
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 proceeding commenced on January 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on February 11, 2019.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 1, 2019. 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 a bank headquartered in Salt Lake City, Utah, in the United States.
The Complainant is the owner of registrations in the United States for various trade marks used by its subsidiary bank in the State of California, including registration No. 2,477,581 for the device trade mark CALIFORNIA BANK & TRUST, with a registration date of August 14, 2001; registration No. 3,041,054 for the trade mark CALIFORNIA BANK & TRUST, with a registration date of January 10, 2006; registration No. 2,618,487 for the trade mark CALBANK NETWORK, with a registration date of September 10, 2002; and registration No. 5,518,238 for the device trade mark CB & TRUST, with a registration date of July 17, 2018 (collectively, the “Trade Marks”).
The Complainant has used the Trade Marks since 1998 in respect of banking and financial services.
The Complainant has also used the common law (unregistered) trade mark CB & T (the “CB & T Mark”) since 1998, including prominently on its website located at “www.calbanktrust.com”.
The Respondent is located in Nigeria.
C. The Disputed Domain Name
The disputed domain name was registered on March 15, 2018.
D. The Respondent’s Use of the Disputed Domain Name
The disputed domain name has not been resolved to any website. The Respondent has used the disputed domain name to send emails in the name of the Complainant in an attempt to fraudulently pass off the Respondent as the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Marks and the CB & T Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration; and rights in the CB & T Mark acquired through use for the purpose of the Policy.
The disputed domain name incorporates the dominant features of the Trade Marks and of the unregistered CB & T Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) – comprising abbreviations, amalgamations and/or homonyms of the dominant features of each of the marks. In this case, the confusing similarity test entails a holistic, aural and phonetic comparison of the Complainant’s trademarks and the disputed domain names. Moreover, the overall facts and circumstances of this case (including the fact that the Respondent has used the disputed domain name to send fraudulent emails in the name of the Complainant) supports a finding of confusing similarity, as the Respondent registered the disputed domain name precisely because it believed that the disputed domain name was confusingly similar to a mark held by the Complainant.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Marks and to the unregistered CB & T Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the Respondent has used the disputed domain name in order to set up a fraudulent email scam.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the Respondent’s registration and use of the disputed domain name in respect of the Respondent’s fraudulent email scam, the Panel has no hesitation in concluding 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 <calbnt.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: March 18, 2019