WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Early Warning Services, LLC v. Ronik Patel
Case No. D2021-0502
1. The Parties
The Complainant is Early Warning Services, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.
The Respondent is Ronik Patel, India.
2. The Domain Name and Registrar
The disputed domain name <zellepayinc.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 February 18, 2021. On February 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2021, 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 February 19, 2021 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 amended Complaint on February 22, 2021.
The Center verified that the Complaint together with the amended 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 March 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2021.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 26, 2021. 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’s business facilitates the transfer of money between bank accounts for people and companies in the United States. The Complainant’s services are accepted by many banking institutions including the Bank of America, U.S. Bank, Citi, Ally Bank, HSBC, and Wells Fargo. The scale of the Complainant is that in 2019 it processed transactions totalling some USD 187 billion.
The Complainant holds a number of registered trademarks internationally for ZELLE (meaning “cell” in English) and ZELLEPAY, of which the following are sufficiently representative for the purposes of the present proceeding:
ZELLE, word mark, United States Patent and Trademark Office (USPTO), principal register, filed March 9, 2016, registered August 29, 2017, registration number 5277307, in class 36;
ZELLEPAY, word mark, USPTO, principal register, filed March 9, 2016, registered December 17, 2019, registration number 5938276, in class 36;
ZELLE | THIS IS HOW MONEY MOVES, word mark, USPTO, principal register, filed December 14, 2016, registered September 26, 2017, registration number 5298235, in class 36.
The Complainant also owns about 38 other trademarks incorporating variations of the above trademark words in English, Spanish or abstracted form.
The Complainant also owns some hundreds of domain names incorporating the trademark ZELLE including <zellepayment.com>, <zellepayments.com>, <zellepay.net>, <zellepay.cash>, <zellepay.money>, <zelle.info>, <zelle.co>, <zelle.finance>, and <zelle.credit>.
The Respondent has not provided any background information except for the contact details provided to the Registrar for the purpose of registering the disputed domain name on February 15, 2021. The disputed domain name has resolved to parking pages (the “Respondent’s website”) bearing the notice “Get This Domain” and offering an assortment of links to other websites.
5. Parties’ Contentions
The Complainant says the Respondent is using the disputed domain name for cybersquatting and the diversion of Internet users away from the Complainant.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks since it incorporates the entirety of the Complainant’s trademarks ZELLE and ZELLEPAY. The additional term “inc” is merely the designation of a corporation and should not prevent a finding of confusing similarity. Confusion is particularly likely as the Complainant operates essentially online and Internet users will not see a physical presence.
The Complainant further contends that the Respondent has no legitimate rights or interests in the disputed domain name.
By way of asserting a prima facie lack of the Respondent rights, the Complainant states that it has no connection with the Respondent, that the Complainant’s trademarks are well-known to millions of users, and that the Respondent has never been commonly known by the Complainant’s trademarks comprising the disputed domain name. The Respondent intends to divert Internet users to the disputed domain name for commercial gain, which usage cannot be noncommercial or fair use.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The corresponding website displays the Complainant’s trademark and the Respondent’s intention is to trade off the reputation and goodwill of the Complainant’s trademark by diverting the Complainant’s intending customers to the Respondent for commercial gain.
Furthermore, the Complainant says the disputed domain name is parked with links to third parties but without genuine content, and is therefore effectively being passively held.
The Complainant has cited a number of previous UDRP decisions under the Policy that it considers to be supportive of its case.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has produced evidence that it owns and has rights in the registered trademarks ZELLE and ZELLEPAY. Confusing similarity is determined by an objective comparison of these trademarks with the disputed domain name. Both trademarks are prominent in the disputed domain name <zellepayinc.com>, the only significant difference being the additional term “inc”, commonly recognised as the abbreviation for “incorporated”. The term “inc” is found not to prevent a finding of confusing similarity with the Complainant’s trademarks. The generic Top-Level Domain “.com” need not be taken into consideration.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks and finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated that it has no connection with the Respondent and that the Respondent has never been commonly known by the disputed domain name, which incorporates the Complainant’s well-known trademarks. The Complainant says the disputed domain name is in use for commercial gain by means of link referrals that depend on the Complainant’s trademark in order to attract users, which cannot be a noncommercial or fair use. The Complainant has thus presented a prima facie case to the effect that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent has made no reply and has not asserted any rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy, or otherwise. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, 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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The website to which the disputed domain name has resolved, states that it is parked free, courtesy of GoDaddy. The prominent heading on each of the seven pages produced in evidence is “zellepayinc.com”, and a box states “Get This Domain”, implying it is for sale. The first page indexes the other pages, each of which has several links such as “Enterprise Payments Processing - Pay Freelancers Faster”, which in that instance would appear to lead to goods or services competitive with the Complainant’s services, each accompanied by a “Visit Website” button.
Taking into account that the disputed domain name resolves to a free parking page populated with advertising links, and is marked “Get This Domain”, it may reasonably be concluded on the balance of probabilities that it (1) is passively held, and (2) is enrolled in a pay-per-click scheme in which visitors are referred to the websites of advertisers in return for revenue that is shared with, in this instance, the Respondent.
The Complainant’s services, according to the Complainant’s uncontested statement, are recognised and accepted by major banking institutions operating in the United States including the Bank of America, U.S. Bank, Citi, Ally Bank, HSBC, and Wells Fargo; the full list of partners produced by the Complainant runs to some 34 widely-spaced pages. The trademarks ZELLE and ZELLEPAY are unusual and distinctive. It is reasonable to infer that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and the nature of its services.
As is well established in decisions under the Policy, the holding of a domain name incorporating a well-known trademark without substantive use, i.e., passive holding, does not preclude a finding of use in bad faith. On the evidence, the disputed domain name is found to have been used with intent to attract visitors to the Respondent’s website by confusion with the Complainant’s well-known trademark, for the purpose of commercial gain, constituting use in bad faith under paragraph 4(b)(iv) of the Policy. The Panel further finds, on the evidence and on the balance of probabilities, that the disputed domain name was registered for the bad faith purpose for which it has been used.
Accordingly, the Panel finds the disputed domain name to have been registered and used by the Respondent in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
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 <zellepayinc.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: May 3, 2021