WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zions Bancorporation v. Mohammed Akik Miah

Case No. D2014-0269

1. The Parties

The Complainant is Zions Bancorporation of Salt Lake City, Utah, United States of America (“USA”), represented by Callister Nebeker & McCullough, USA.

The Respondent is Mohammed Akik Miah of London, United Kingdom of Great Britain and Northern Ireland (“UK”).

2. The Domain Name and Registrar

The disputed domain name <zionsbank.holdings> (the “Disputed Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2014. On February 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 28, 2014, 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 Complainant submitted an amendment to the Complaint on March 3, 2014 to modify its mutual jurisdiction election.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint with the amendment, and the proceedings commenced on March 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2014. On March 13, 2014, the Respondent sent an email communication to the Center as an informal response to the Complaint. The Center asked the Respondent to confirm whether this email communication might be regarded as its complete Response, but the Respondent did not send any reply. Accordingly, on March 25, 2014, the Center informed the parties that the Center would proceed to Panel Appointment.

The Center appointed John Swinson as the sole panelist in this matter on April 2, 2014. 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 Zions Bancorporation. The Complainant is a bank holding company headquartered in Salt Lake City, Utah, USA.

The Complainant owns the following USA registrations:

- Registration No. 2,381,006 for the service mark ZIONS BANK (registered August 29, 2000);

- Registration No. 2,531,436 for the service mark ZIONSBANK.COM (registered January 22, 2002); and

- Registration No. 2,380,325 for the service mark ZIONS (registered August 29, 2000).

The Complainant also owns and uses the domain name <zionsbank.com>.

The Respondent is an individual, Mohammed Akik Miah of London, UK.

The Disputed Domain Name was created on February 6, 2014. The Disputed Domain Name currently resolves to an error page.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

A.1. Identical or Confusingly Similar

The Disputed Domain Name is confusingly similar to the Complainant’s ZIONS BANK, ZIONSBANK.COM and ZIONS marks.

The Disputed Domain Name includes the new generic Top-Level Domain (gTLD) “.holdings”. This does not distinguish the Disputed Domain Name from any of the Complainant’s registered marks.

A. 2. Rights or Legitimate Interests

The Complainant submits that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name for the following reasons:

- the Respondent is not a licensee for the Complainant’s marks, and has not otherwise obtained authorization to use the marks;

- the Respondent is not using the Disputed Domain Name as part of a bona fide offering of goods or services;

- the Respondent is using the Disputed Domain Name to direct Internet users to a misleading website (because the Respondent’s website is misleading, the Respondent may also use it in connection with various phishing and fraudulent activities); and

- the Respondent’s use of the Complainant’s marks may tarnish those marks.

A.3. Registered and Used in Bad Faith

TheRespondent registered and is using the Disputed Domain Name in bad faith for the following reasons:

- the website at the Disputed Domain Name provides links to services which are similar to the services offered by the Complainant under its marks, indicating that the Disputed Domain Name was registered primarily for the purpose of disrupting the Complainant’s business;

- the Respondent has displayed the Complainant’s ZIONS mark on a website associated with the Disputed Domain Name; and

- by using the dominant portion of the Complainant’s marks in the Disputed Domain Name and on the associated website, the Respondent is intentionally creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

The Respondent made the following (limited) submissions via email, in an informal response:

- “according to i cann [the Respondent] can” obtain any domain name that he wants to, as long as he intends to use it;

- the Respondent purchased the Disputed Domain Name without any intention to “smear anyone” or “to do harm to the bank”; and

- the Complainant has “no right over my domain names”.

The Respondent offered to add the following (or similar) wording to the website at the Disputed Domain Name: “there is no official partnership with zion bank”. The Respondent said that he would not use any of the Complainant’s official logos on the website.

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 trade mark 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.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Panel has verified that the Complainant has rights in the ZIONS BANK, ZIONSBANK.COM and ZIONS service marks.

The second-level domain of the Disputed Domain Name is identical to the Complainant’s ZIONS BANK mark.

This Complaint concerns the new gTLD “.holdings”. The question arises as to the potential impact of the TLD suffix when considering if the Disputed Domain Name, <zionsbank.holdings>, is identical or confusingly similar to the ZIONS BANK mark. Although historically UDRP cases tend to look primarily at the second-level portion of a disputed domain name, there is no blanket rule that panelists must ignore the TLD suffix in such Policy assessment (see, e.g., Tesco Stores Limited v. Mat Feakins, WIPO Case No. DCO2013-0017). In some instances, the TLD suffix may impact the analysis under the first element of the Policy. For example, if the trade mark in question was “Hills Holdings” and the disputed domain name was “hills.holdings”, then consideration of the TLD suffix may be relevant insofar as such (hypothetical) mark “spans the dot”, that is, viewed together, the second- and top-level portions of the disputed domain name are identical (or confusingly similar) to the mark. In other instances, reinforcing UDRP case precedent (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the TLD suffix may have little impact on the overall identity (or similarity) assessment when undertaking a side-by-side comparison of the disputed domain name and the complainant’s trade mark.

The issue of whether new gTLDs should be taken into account when determining whether a disputed domain name is identical or confusingly similar to the mark at issue was addressed in the first UDRP case involving a new gTLD. In Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206, the panel made the following statement:

“The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach. However, the Panel considers that it is not necessary to do so in the present case. The test in paragraph 4(a)(i) of the Policy is ‘a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint’ (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). There is no doubt in the Panel’s mind that the Complainant’s case on this element of the Policy, with which the Respondent does not take issue, more than meets this threshold.”

The Panel agrees with this approach. In including the TLD in the first prong, different scenarios can present themselves. In this case, the Panel finds that the “.holdings” TLD at the end of the Disputed Domain Name does not prevent a finding that the Disputed Domain Name is identical or confusingly similar to the Complainant’s ZIONS BANK mark.

In short, when undertaking a side-by-side comparison, this Panel considers that the Disputed Domain Name <zionsbank.holdings> is identical or confusingly similar to the Complainant’s ZIONS BANK mark.

In light of the above, the Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case and the Respondent has not:

- used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services (there is no currently active website at the Disputed Domain Name);

- been commonly known by the Disputed Domain Name; or

- been making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain (the Respondent is currently passively holding the Disputed Domain Name).

Further, the Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so in his brief email Response. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

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 is using the Disputed Domain Name in bad faith.

The Disputed Domain Name currently resolves to an error page (i.e. it is not being actively used). However, passive holding does not prevent a finding of bad faith under certain circumstances (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, affirmed in subsequent cases such as Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). The question is whether, taking into account all the circumstances, the Respondent’s passive holding of the Disputed Domain Name can be considered registration and use in bad faith.

The Respondent most likely registered the Disputed Domain Name with knowledge of both the Complainant and its marks. The Panel reaches this view in light of the reputation of both the Complainant and its marks and the fact that the Disputed Domain Name incorporates the Complainant’s ZIONS BANK mark in its entirety. As stated by the panel in Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415, “[i]t defies common sense to believe that Respondent coincidentally selected [the] precise domain [name] without any knowledge of Complainant and its […] Trademarks”. (See also Incipio Technologies, Inc. v. Starfield Services Ltd., WIPO Case No. D2011-0418.)

In light of the above (and in the absence of any submissions to the contrary from the Respondent), the Panel finds no conceivable legitimate or bona fide use of the Disputed Domain Name by the Respondent.

The Panel finds that the Complainant has succeeded on the third element of the Policy.

In addition, the Panel notes the Complainant’s submission that the website at the Disputed Domain Name has previously hosted links to services which are similar to the services offered by the Complainant under its marks and even displayed the Complainant’s mark on this site. However, the Complainant did not provide any evidence to support this submission (e.g. a historical screenshot of the website at the Disputed Domain Name). The Panel conducted independent research, as it is entitled to¹, but was unable to obtain any historical records of the website at the Disputed Domain Name. As such, the Panel was unable to rely on this submission in rending the decision.

The Panel also notes that the Respondent appears to be a party in another domain name dispute, under the Uniform Rapid Suspension System (URS) involving a third-party mark owner. While the Panel notes the limited possibility for evidentiary analysis and the significantly abbreviated decision framework under the URS vis-à-vis the UDRP (the latter allowing for a more complete record, fully motivated decision, and a more robust remedy), the fact that registrant has been named in such proceedings could in certain circumstances be relevant to assessing bad faith under the Policy.

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 <zionsbank.holdings> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: April 12, 2014

¹ See paragraph 4.5 of WIPO Overview 2.0.