WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Early Warning Services, LLC v. Tianxing Zhou
Case No. D2019-1716
1. The Parties
Complainant is Early Warning Services, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.
Respondent is Tianxing Zhou, United States.
2. The Domain Name and Registrar
The disputed domain names <zellecodepay.com>, <zellemo.com>, <zellerewards.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 23, 2019, 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 July 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 14, 2019.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 20, 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
Complainant is a digital payment network used by more than 120 banks worldwide, including such banks as Bank of America, U.S. Bank, Citi, HSBC. Complainant’s electronic payment services have 84 million enrollments, and in 2018 were used to process 433 million transactions totaling USD 119 billion in payments. Complainant has numerous trademark registrations with the United States Patent and Trademarks Office (“USPTO”) for the ZELLE mark and for related marks, the earliest of which issued on August 29, 2017. Complainant has also registered the ZELLE mark and related marks in countries around the world.
Complainant does business over the Internet in which Complainant utilizes a number of domain names incorporating its ZELLE trademark. Complainant has no connection to Respondent, nor has Complainant licensed or otherwise authorized Respondent to use its ZELLE trademark or to conduct business under that mark.
Respondent registered the disputed domain names on November 13, 2017 and December 6, 2017. Respondent uses the disputed domain names to resolve to parking pages which contain links to third party commercial web sites. The web sites to which the disputed domain names resolve offer the domain names for sale.
5. Parties’ Contentions
Complainant contends that the disputed domain names are confusingly similar to Complainant’s fanciful ZELLE trademark in that each disputed domain name contains the unusual mark, that Respondent has nor right or legitimate interest in respect to the disputed domain names, and that Respondent has registered each of the disputed domain names in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Each of the disputed domain names consists of Complainant’s fanciful ZELLE trademark with common English words (“code”, “pay” or “rewards”) or alphabet characters (“mo”) appended thereto. Accordingly, the Panel finds that the disputed domain names are confusingly similar to the ZELLE trademark in which Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Respondent uses the disputed domain names to resolve to parking sites, at which links to other commercial sites unrelated to Complainant, thus diverting users familiar with Complainant’s ZELLE trademark to other unrelated businesses. On the web sites to which each of the disputed domain names resolves, there is an offer to sell the disputed domain names to those who arrive at the sites. Accordingly, the Panel finds that the disputed domain names have been registered and are 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 names, <zellecodepay.com>, <zellemo.com>, and <zellerewards.com> be transferred to Complainant.
M. Scott Donahey
Date: August 20, 2019