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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zions Bancorporation, N.A. a national banking association, dba National Bank of Arizona v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-0157

1. The Parties

The Complainant is Zions Bancorporation, N.A. a national banking association, dba National Bank of Arizona of Salt Lake City, Utah, United States of America (“United States”), represented by TechLaw Ventures, PLLC, United States.

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico, of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <nbankofarizona.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2019, 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 28, 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 28, 2019.

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 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2019. On February 22, 2019, owing to an administrative oversight occurring on the date of Notification of Complaint, the Respondent was given until February 27, 2019 to respond to the Complaint. The Respondent did not submit any response.

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

A. Complainant

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 the trade mark NATIONAL BANK OF ARIZONA, including registration No. 2,914,624, with a registration date of December 28, 2004; and for the trade mark NB|AZ, under registration No. 3,916,017, with a registration date of February 8, 2011 (collectively, the “Trade Mark(s)”).

The Complainant has used the Trade Marks since May 15, 1982 and November 1, 2009, respectively, in respect of banking and financial services.

B. Respondent

The Respondent is located in Panama.

C. The Disputed Domain Name

The disputed domain name was registered on January 11, 2019.

D. Use of the Disputed Domain Name

The disputed domain name has been used in respect of a parking page containing sponsored links to various banking, financial services, and insurance related websites (the “Website”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Marks, 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.

B. Respondent

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. The disputed domain name incorporates the dominant features of the Complainant’s NATIONAL BANK OF ARIZONA Trade Mark, namely the first letter “n” of the word “national” (an abbreviation of “national”) together with the words “bank of arizona” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). The disputed domain name is also confusingly similar to the Complainant’s NB|AZ Trade Mark (itself an abbreviation of the Complainant’s NATIONAL BANK OF ARIZONA Trade Mark).

The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Marks.

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 disputed domain name has been used in connection with the Website, to obtain pay-per-click revenue via sponsored links to banking, financial services, and insurance related websites.

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 manner of use of the disputed domain name highlighted in section 6B above, the Panel finds that the requisite element of bad faith has been made out, under paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the disputed domain name has been registered and is being used 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 <nbankofarizona.com> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: March 11, 2019

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