WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zions Bancorporation, N.A. v. Shazarri Auto Equipment
Case No. D2019-2451
1. The Parties
The Complainant is Zions Bancorporation, N.A., United States of America (“United States” or “U.S”), represented by TechLaw Ventures, PLLC, United States of America.
The Respondent is Shazarri Auto Equipment, United States.
2. The Domain Name and Registrar
The disputed domain name <zionfunding.net> 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 October 8, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2019, 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 October 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on November 19, 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 in this proceeding is Zions Bancorporation, N.A., a national banking association, doing business as Zions First National Bank. It owns valid and subsisting registrations in the United States for the ZIONS trademark and other ZIONS-formative marks, including ZIONS (U.S. Reg. No. 2,380,325), ZIONS BANK, (U.S. Reg. No. 2,381,006), and ZIONSBANK.COM (U.S. Reg. No. 2,531,436). Complainant has been using the ZIONS trademark since as early as 1891 and the mark was first registered in 2000 in connection with financial services, including banking, mortgage lending, and investment management services, among others.
The disputed domain name <zionfunding.net> was registered on June 28, 2017. It currently resolves to a webpage offering commercial financing services.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to its ZIONS trademarks because the disputed domain name reproduces the ZIONS mark but with the “s” omitted.
Complainant contends that Respondent has no rights or legitimate interests in or to the disputed domain name. Complainant asserts that Respondent Shazarri Auto Equipment is not commonly known by the disputed domain name. Complainant contends that Respondent is not making legitimate noncommercial or fair use of the disputed domain name because the website located at the disputed domain name purportedly offers commercial content in the nature of ostensible financial services, which is intended to mislead consumers by using a domain name that it confusingly similar to Complainant’s ZIONS trademarks. Complainant also asserts that it has not licensed the right to use the ZIONS trademark to Respondent, and that Respondent is not otherwise authorized to act on Complainant’s behalf.
Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith. According to Complainant, bad faith registration and use of the disputed domain name is established by the fact that it purposefully incorporates a confusingly similar variation of Complainant’s ZIONS mark. According to Complainant, the use of virtually identical or similar marks in the disputed domain name indicates that it was registered primarily for the purpose of disrupting the business of Complainant and to take advantage of the goodwill associated with Complainant’s federally registered trademarks to divert customers to the disputed domain for Respondent’s commercial gain. Furthermore, Complainant contends that Respondent knew or should have known about the existence of Complainant’s trademarks because they are distinct and well-known, the content of Respondent’s website uses Complainant’s trademarks in connection to identical or substantially similar services and Complainant’s trademarks were registered long before the disputed domain was registered by Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Issue: Multiple Respondents
In its Complaint, Complainant identified both Shazarri Auto Equipment and Zion Financial and Leasing, LLC as Respondents. Paragraph 1 of the UDRP Rules defines “Respondent” to be “the holder of a domain-name registration against which a complaint is initiated”. The use of the word “holder” rather than “registrant” suggests that the “holder” of a domain name may be someone other than the registrant of it. Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345. There are situations in which the registrant of a domain name is not in fact the person who holds the true beneficial interest in the domain name. Id.
Here, there is only a single domain name in dispute, and the registration information for this domain name clearly identifies Robert Jenkins, Shazarri Auto Equipment as the registrant. Zion Financial and Leasing, LLC is certainly identified on the website to which the disputed domain name directs, but Complainant has not provided further evidence as to why it is necessary to name this party as an additional Respondent in this case. Accordingly, it is not clear that Zion Financial and Leasing, LLC is a proper Respondent in this case, without further evidence of any relationship between the listed registrant and this additional entity. All activity associated with the disputed domain name can simply be attributed to its listed registrant Shazarri Auto Equipment. Accordingly, for purposes of this proceeding, all references to Respondent refer to the organizational registrant Shazarri Auto Equipment.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, even though Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Here, Complainant has provided evidence that it has rights in the ZIONS marks, through its United States registrations.
With Complainant’s rights in the ZIONS marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”), in this case “.net”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing Id. Furthermore, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element Id.
Here, the disputed domain name is confusingly similar to Complainant’s ZIONS mark disregarding the gTLD “.net”. The disputed domain name <zionfunding.net> incorporates a clear and obvious typographical variation of the ZIONS mark, merely omitting the “s” in ZIONS within the domain name. The term “funding” here is clearly descriptive and relates to the financial services industry in which Complainant provides its goods and services. Therefore, the inclusion of this term does not prevent a finding of confusing similarity under this element. Accordingly, Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the ZIONS mark and in showing that the disputed domain name is identical or confusingly similar to this trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, 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 it has acquired no trademark 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 trademark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not using the disputed domain name for any legitimate noncommercial or fair use. Complainant has asserted that Respondent has no authorization to use the ZIONS marks. Complainant has also asserted that Respondent is not commonly known by the name ZIONS. However, the website to which the disputed domain name directs purportedly offers goods and services in the nature of financial services under the entity name Zion Financial and Leasing, LLC. That said, later adoption, without authorization, of a confusingly similar designation for a business that directly competes with that of Complainant would not constitute a bona fide offering of goods and services and Respondent has failed to rebut Complainant’s allegations and evidence to come forward with countervailing evidence in support of any possible rights or legitimate interests in the disputed domain name. Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.”
UDRP panels may take into account particular circumstances in assessing whether the respondent’s registration of a domain name is in bad faith such as: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion). WIPO Overview 3.0, section 3.2.1. In limited circumstances – notably where the parties are both located in the United States and the complainant has obtained a federal trademark registration pre-dating the relevant domain name registration – panels have been prepared to apply the concept of constructive notice. WIPO Overview 3.0, section 3.2.2.
Furthermore, UDRP panels have found that seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, and the lack of a respondent’s own rights to or legitimate interests in a domain name can be considered evidence that support finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark. WIPO Overview 3.0, section 3.1.4.
The disputed domain name incorporates a near-identical variation of the ZIONS mark and the services purportedly provided at the website located at the disputed domain name are coextensive with those provided by Complainant in connection with its ZIONS marks. Complainant has also provided evidence of the numerous registrations of the ZIONS trademarks that long predates the registration and use of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the ZIONS trademarks, or should have been aware of them, when it registered the disputed domain name, and knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s marks. SeeWIPO Overview 3.0, section 3.2.2, see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Respondent’s use of a confusingly similar designation in the disputed domain name to direct consumers to goods and services competitive to Complainant provides under its ZIONS mark is evidence of bad faith within the meaning of Policy paragraph 4(b)(iii), namely that the disputed domain name has been registered and used primarily for the purpose of disrupting the business of a competitor. The evidence also supports a finding of bad faith within the meaning of Policy paragraph 4(b)(iv), given that Respondent has used the disputed domain name to direct consumers to its own ostensible financial services for its own commercial gain, by unfairly trading on the goodwill associated with Complainant’s ZIONS marks.
The Panel therefore finds 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 <zionfunding.net> be transferred to the Complainant.
Brian J. Winterfeldt
Date: December 6, 2019