WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Early Warning Services, LLC v. Privacy service provided by Withheld for Privacy ehf / Zeller Trappa, Cheap Toolie, Ken Zoe, and Jason Bourne

Case No. D2021-2846

1. The Parties

The Complainant is Early Warning Services, LLC, United States of America (“United States” or “U.S.”), internally represented.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Zeller Trappa, Canada; Cheap Toolie, Canada; Ken Zoe, Canada; and Jason Bourne, Canada.

2. The Domain Names and Registrar

The disputed domain names <us-zelle-payment.com>, <zelle-payment.net>, <zelle-transfer.com>, and <zelle-us-payment.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2021. On August 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 31, 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 September 5, 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 September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2021.

The Center appointed John Swinson as the sole panelist in this matter on October 15, 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 is a digital payment network, based in the United States that enables people and businesses to transfer money between bank accounts. More than 800 financial institutions use the Complainant’s services.

The Complainant operates a website at <zellepay.com>, which promotes the Complainant’s money transfer services.

The Complainant owns trademark registrations for ZELLE and ZELLEPAY in numerous countries. These registrations include U.S. Registration No. 5,277,307 for ZELLE, filed on March 9, 2016, and registered on August 29, 2017, for “financial transaction services, namely, providing secure payment and money transfer options and permitting account holders to make payment requests” in class 36; and U.S. Registration No. 5,938,276 for ZELLEPAY, filed on March 9, 2016, and registered on December 17, 2019, for “financial transaction services, namely, providing secure payment and money transfer options and permitting account holders to make payment requests” also in class 36.

The disputed domain names were registered on the following dates:

- <us-zelle-payment.com> - January 10, 2021;
- <zelle-payment.net> - January 11, 2021;
- <zelle-transfer.com> - January 14, 2021; and
<zelle-us-payment.com> - January 17, 2021.

The Respondent did not file a response, so little is known about the Respondent.

At the time of this decision, the disputed domain names do not resolve to any active website.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant makes the following submissions:

This is a textbook case of cybersquatting. The Respondent is engaged in the unauthorized use of the Complainant’s registered trademarks, as all disputed domain names completely incorporate the Complainant’s ZELLE trademarks, and also is engaged in the illegal diversion of Internet customers from the Complainant’s primary website at “www.zellepay.com”.

The Complainant, and its related and affiliated entities and licensees, is one of the world’s leading and fastest-growing digital payment networks. In 2019 alone, the Complainant’s services processed 743 million transactions totaling USD 187 billion in payments. The Complainant holds numerous trademark registrations for the ZELLE trademarks and variations thereof (including ZELLEPAY), in the United States and around the world.

The registrations for the disputed domain names should be transferred to the Complainant because they wholly incorporate the Complainant’s ZELLE trademarks. The disputed domain names are identical to the Complainant’s ZELLE trademarks, except that the disputed domain names add the descriptive words “transfer”, “payment”, and/or “US” (“US” being a common abbreviation of the geographic location “United States”) to the Complainant’s ZELLE trademarks.

The Respondent’s use of identical or confusingly similar disputed domain names seeks to exploit consumer confusion. Unlike consumers in a traditional retail context, who must actually travel to a physical location to purchase goods and services, Internet consumers are more likely to be misled into visiting virtual locations by the use of confusingly similar domain names. The Respondent seeks to exploit consumer confusion and the Complainant’s fame and goodwill by fully incorporating the Complainant’s ZELLE trademarks in the disputed domain names. This exploitation is particularly problematic because the Complainant operates its core business online.

The Respondent is not in any way associated with the Complainant and has never sought or received authorization or a license to use the Complainant’s valuable, famous and distinctive ZELLE trademarks in any way or manner. The Complainant’s ZELLE trademarks are well known throughout the United States and in other countries throughout the world, and its services are used by more than 800 financial institutions and by millions of users.

The Respondent has no means to establish that it is or ever has been commonly known as “Zelle” or any variation thereof. Upon information and belief, the Respondent has not sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for “Zelle” or any variation thereof.

The Respondent is not making any legitimate noncommercial use of the disputed domain names. To the contrary, the Respondent’s uses of the disputed domain names are purely commercial and not legitimate. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks.

The ZELLE trademarks are invented English words, and as such, third parties would not legitimately choose either Zelle - particularly in connection with the words “transfer” or “payment”, or the abbreviation “US” - unless seeking to create an impression of an association with the Complainant.

The Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests to the disputed domain names because the Respondent is not authorized by the Complainant to use the disputed domain names, there is no evidence suggesting that the Respondent is known under the disputed domain names, the Complainant’s trademarks are well known, and the disputed domain names are being used as bait to lure consumers to the Respondent’s websites.

The disputed domain names are plainly designed to trade on the reputation and goodwill of the Complainant and its ZELLE trademarks for financial gain. The Respondent utilizes infringing domain names to divert potential users (a) away from the Complainant’s primary website at “www.zellepay.com”, (b) away from the Complainant’s authentic Zelle brand services, and (c) toward the Respondent’s imposter websites.

The Respondent registered the disputed domain names, which wholly incorporate the Complainant’s famous ZELLE trademarks and merely add words descriptive of the Complainant’s core services and/or the geographic location where the Complainant offers its core services, and the disputed domain names resolve to landing pages that contain phishing attempts and/or malware. Numerous UDRP decisions have found bad faith under similar circumstances.

The Respondent continues to wrongfully use the Complainant’s ZELLE trademarks to draw users to its websites, create confusion, and improperly reap commercial profit through diverted sales. The Respondent’s use of the ZELLE trademarks is illegal and improper under the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

Paragraph 15(a) of the Rules directs the Panel to decide the 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.

Consolidation of Multiple Registrants

The Complaint relates to four disputed domain names, where the Registrar records that each is supposedly owned by a different person. The Complainant states that it is appropriate that the four disputed domain names be considered in the one Complaint, because they are under common ownership and control. The Complainant provides detailed reasons and evidence for this conclusion, including the following:

“[Privacy service provided by] Withheld for Privacy ehf” is the listed registrant organization for all four disputed domain names. The disputed domain names are all registered with the same Registrar. The disputed domain names were all registered within one week of each other. The disputed domain names all use the same name servers. The Complainant has reason to believe Zeller Trappa, Cheap Toolie, Ken Zoe, and Jason Bourne are aliases for one individual who registered all four of the disputed domain names. Three of the four disputed domain names are registered to addresses in Montreal, Quebec, and, though the fourth disputed domain name is registered to an address in Saskatoon, Saskatchewan, the telephone number associated with that registration has a Montreal area code and is a Montreal landline (the Complainant called this telephone number and it is no longer in service). Two of the disputed domain names are registered to addresses on the same street in Montreal. According to the Complainant, the registrant’s address for <zelle-transfer.com> does not appear to exist in Google Maps. The Complainant also asserts that the names for the registrants for the disputed domain names are likely to be aliases. For example, two of the names associated with these registrations, Jason Bourne (the named registrant for <zelle-us-payment.com>) and Cheap Toolie (the named registrant for <zelle-payment.net>), are (according to the Complainant) almost certainly fake names being used as aliases for the true registrant. “Jason Bourne” is the name of the protagonist in the popular Bourne action movies starring Matt Damon, “Cheap” is not a name that parents are likely to name a child, and “Toolie” is an unlikely surname.

All four of the disputed domain names include similar structure and use of hyphens.

After considering the detailed evidence provided by the Complainant, the Panel concludes that all four of the disputed domain names were likely registered and owned or controlled by the same person. Moreover, none of the registrants has objected to the Complainant’s consolidation request. Therefore, the Panel considers consolidation would be fair and equitable to all Parties. In such circumstances, consolidation is appropriate. SanLorenzo S.p.A. v. Dzhek V Sparro, Hitler Neosilil, Hujuskin Pushkin, Petr Frankenstein, WIPO Case No. D2018-2946.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

As set out above, the Complainant owns trademark registrations for ZELLE. The term “Zelle” is an invented fanciful term in English.

The Panel considers that the disputed domain names are confusingly similar to the Complainant’s ZELLE trademark.

The disputed domain names include the Complainant’s ZELLE trademark in its entirety.

When a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish confusing similarity for purposes of the Policy. Mr. Price Group Limited v. Registration Private, Domains By Proxy, LLC / Mr Price, WIPO Case No. D2019-0878.

The addition of the words “payment”, “transfer” and “us” in the disputed domain names does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark under the Policy.

The terms “payment” and “transfer” relate to the services provided by the Complainant. Where a domain name takes a trademark of a business and then adds words descriptive of goods or services provided by that business, this strengthen the Complainant’s position. HarperCollins Publisher Ltd. v. Digi Real Estate Foundation, WIPO Case No. D2009-0565.

The term “us” may be the word “us” (as in, “My sister and I would like you to transfer the money to us.”) or it may be a reference to “United States”. Regardless of the meaning of “us” in two of the disputed domain names, the Complainant’s ZELLE trademark is recognizable in these disputed domain names.

The Complainant succeeds on the first element of the Policy in relation to the disputed domain names.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the 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 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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Each disputed domain name must be considered separately.

Previous UDRP panels have recognized the difficulties inherent in proving a negative, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.

Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.

The Panel concludes that none of the circumstances listed in paragraph 4(c) apply in the present circumstances.

The Complainant asserts that the Complainant has not authorized the Respondent to use the ZELLE trademark, and that the Respondent is not commonly known by the disputed domain names.

The Complainant also asserts that its trademarks are well known, and that the disputed domain names serve to lure customers to the Respondent’s websites. In effect, the Complainant is asserting that any use by the Respondent of the disputed domain names is not bona fide or legitimate.

The Complainant also asserts that the Respondent is not making a legitimate noncommerical use of the disputed domain names.

The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain names. It is thus incumbent upon the Respondent to come forward with concrete evidence rebutting the Complainant’s assertions. TREDNET, Direct Distribution International Ltd (“DDI”) v. WhoisGuard Namecheap / BODYPOWER, WIPO Case No. D2012-2001.

The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.

For the reasons set forth above, the Panel concludes the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant succeeds on the second element of the Policy in relation to the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain names in bad faith.

The Panel considers that the Complainant’s ZELLE trademark is well known and distinctive. “Zelle” is not a dictionary term in English.

It is clear that the Respondent is aware of the Complainant and the Complainant’s ZELLE trademark, and intentionally targeted that trademark when the Respondent registered the disputed domain names.

It is not a coincidence that the Respondent registered four disputed domain names that included the term “Zelle” along with the words such as “payment” and “transfer” which are descriptive of the services provided by the Complainant. The fact that the disputed domain names are so obviously connected with the Complainant’s ZELLE trademark, the Panel considers that the only logical conclusion is that the Respondent targeted the Complainant and its marks when registering the disputed domain names. See Accenture Global Services Limited v. ICS INC. / PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of the complainant and its ACCENTURE mark at the time the disputed domain name was registered); and Early Warning Services, LLC v. Caren Shaw, Sharon Shaw, WIPO Case No. D2021-0092.

Further, at one time it appears that the websites at the disputed domain names were active and had dangerous content. The Complainant included four screenshots showing a warning message from Microsoft (because the Complainant was using the Microsoft Defender program) when the Complainant entered the disputed domain names into its browser that stated:

“Microsoft recommends you don’t continue to this site. It has been reported to Microsoft for containing phishing threats which may try to steal personal or financial information.”

If the Respondent’s websites were being used for financial fraud, then this is bad faith use under the Policy.

Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031; Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk, WIPO Case No. D2020-2773; and L.M. Waterhouse & Co., Inc. v. Scott Myers, Intersearch Global, WIPO Case No. D2021-0962.

Additionally, paragraph 4(b)(ii) of the Policy applies here. The Respondent registered all four of the disputed domain names during a one week period, all of which include the ZELLE trademark. This constitutes a pattern of conduct of preventing the Complainant from reflecting its trademark in corresponding domain names.

Even though at the time of this decision, the disputed domain names do not resolve to any active website, this does not prevent a finding of bad faith.

Thus, for the above reasons, the Panel concludes that the registration and use of the disputed domain names was in bad faith.

The Complainant succeeds on the third element of the Policy in relation to the disputed domain names.

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 names <us-zelle-payment.com>, <zelle-payment.net>, <zelle-transfer.com>, and <zelle-us-payment.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: October 29, 2021