WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zions Bancorporation v. KP LLC, Jay Edgington / Domains By Proxy, LLC
Case No. D2014-1509
1. The Parties
Complainant is Zions Bancorporation, Salt Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America.
Respondent is KP LLC., Jay Edgington, Lehi, Utah, United States of America, / Domains By Proxy, LLC, Scottsdale, Arizona, United States of America, represented by Lowell N. Hawkes, Chartered, United States of America.
2. The Domain Names and Registrar
The Disputed Domain Names <zionsadvisors.com>, <zionscapitaladvisors.co, <zionscapitaladvisors.com> <zionscapitaladvisors.info>, <zionscapitaladvisors.net> and <zionscapital.com> are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 3, 2014. On September 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 4, 2014, the Registrar transmitted by email to the Center its verification response stating that the registrant of the Disputed Domain Names <zionsadvisors.com>, <zionscapitaladvisors.info>, <zionscapitaladvisors.co>, and <zionscapitaladvisors.net> is KP LLC. The Center sent an email communication to Complainant on September 5, 2014 requesting an amendment to the Complaint. With the disclosed information from the Registrar, the Complainant filed a request for consolidation with WIPO Case No. D2014-15061 and also filed an amended Complaint.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2014. The Response was filed with the Center on October 10, 2014.
The Center appointed Richard W. Page as the sole panelist in this matter on October 20, 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
Complainant is the owner of the following trademarks registered with the United States Patent and Trademark Office: ZIONS BANK, Registration No. 2,381,006; ZIONS BANK.COM, Registration No. 2,531,436; and ZIONS, Registration No. 2,380,325. These registered marks are in use by Complainant and registered for "financial services, namely banking, mortgage lending and banking, trusteeship representatives, investment management services, escrow services, namely holding stock certificates until paid, estate and probate trust management, federal and municipal bond underwriting services and federal and municipal bond brokerage services, financial analysis and consultation and bond private placements, namely finding and arranging for purchasers to buy bonds and advising municipalities on bond structuring, financial services namely banking," and "financial services, namely banking, securities brokering, mortgage lending and banking, trusteeship representatives, investment management services, escrow services, namely holding stock certificates until paid, estate and probate trust management, insurance agencies and brokerage in the fields of property casualty, life, health and disability insurance and bonding services, federal and municipal bond underwriting services and federal and municipal bond brokerage services, bond private placements, namely finding and arranging for purchasers to buy bonds, lease-purchase financing, and financial analysis and consultation," respectively.
Since July 5, 1995, Complainant has been the registrant of the domain name <zionsbank.com> from which Complainant advertises and offers its banking services.
Complainant has been using the ZIONS mark in commerce since at least as early as 1891 and obtained federal registration for such mark on August 29, 2000. Complainant has been using its ZIONS BANK mark in commerce since at least as early as 1992 and obtained federal registration for such mark on August 29, 2000, Complainant has been using its ZIONBANK.COM mark in commerce since at least as early as 1995 and obtained federal registration for such mark on January 22, 2002.
On information and belief, and based exclusively in the WhoIs database information obtained by Complainant, Respondent acquired the registration of the Disputed Domain Names no earlier than May 13, 2014.
Respondent is not a licensee of Complainant's trademarks, and has not otherwise obtained authorization to use Complainant's marks. Respondent Jay Edgington was an employee of an affiliate of Complainant, and acquired no right to the Disputed Domain Names for future use.
5. Parties' Contentions
Complainant contends that each Disputed Domain Name contains a name that is identical to Complainant's registered mark ZIONS and to the dominant portion of Complainant's domain names ZIONS BANK and ZIONSBANK.COM and is otherwise confusingly similar to these registered marks.
Complainant further contends that Respondent registered the Disputed Domain Names that contain the dominant portion of and are identical or virtually identical to the registered marks ZIONS BANK, ZIONSBANK.COM, and ZIONS and the Disputed Domain Names are confusingly similar to such marks. The addition of the words "capital" or "advisors" in the Disputed Doman Names do not distinguish the Disputed Domain Names from Complainant's federally registered trademarks. The dominant part of the Disputed Domain Names is "zions".
Although the websites associated with the Disputed Domain Names , through the use of Complainant's marks, the Disputed Domain Names may direct customers, directly or indirectly, to one or more websites that reference various banking terms and likely confuse consumers as to the source of the goods being offered under Complainant's mark.
Complainant asserts that the use of Complainant's marks in the Disputed Domain Names in the future could be misleading and may divert consumers to Respondent's website instead of Complainant's official and authorized website.
Complainant further asserts that during the term of Respondent Jay Edgington's employment with an affiliate of Complainant, the affiliate changed its name to Zions Capital Advisors. Contemporaneously with, or subsequent to announcing the name change, Respondent registered the Disputed Domain Names. Subsequent to registration of the Disputed Domain Name, <zinoadvisor.com> was available for purchase for US D20,000. Respondent while employed by an affiliate of Complainant registered the Disputed Domain Names and offered at least one for sale for a substantial sum, namely US D20,000. Such registration and use constitutes bad faith. See, The Laurel Pub Company Limited v. Peter Robertson/Turfdata, WIPO Case No. DTV2004-0007.
Complainant alleges that Respondent registered the Disputed Domain Names after Complainant had used and registered its marks with full knowledge of Complainant's rights; that Respondent never used the Disputed Domain Names as part of its own bona fide offering of goods or services, but has held the Disputed Domain Names for future use; and Respondent's intent is to divert Complainant's Internet users.
Complainant further alleges that bad faith may be found even when a website associated with a disputed domain name is not active. In such event, the Panel should examine all of the circumstances of the case to determine bad faith. UDRP Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration. A pattern of registering domain names similar to a trademark may constitute bad faith.
Complainant continues that in addition to the other facts and circumstances addressed in the Complaint, Respondent Jay Edgington's former employment with an affiliate of Complainant, and the registration of the Disputed Domain Names while employed by the affiliate of Complainant for his personal benefit, is evidence of bad faith. As noted in the Complaint, Respondent has registered several domain names, each using Complainant's trademark.
Complainant asserts that the use of identical or similar marks in the Disputed Domain Names indicates that the Disputed Domain Names were registered primarily for the purpose of disrupting the Complainant's federally registered trademarks.
Complainant concludes that the use of the dominant portion of Complainant's marks in the Disputed Domain Names and on the associated websites by Respondent will intentionally create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites.
Respondent denies and disputes that Complainant accrued any right to the title or name by virtue of the title or name including the word "Zion's" or" Zions" whether by virtue of usage by Complainant since 1891 or any long term using of the federal registration.
Respondent denies that Complainant's assertions of right to any company name added or including with the work "Zion's" whether is a legal and lawful extension of any rights arising from the trademark or registration of a single word.
Respondent argues that the trademark of Complainant is ZIONS BANK with a space between the two words; it is not a trademark to any other term or even the two words combined without a space.
Respondent argues that the word "Zion" asserted by Complaint as having some exclusivity just for Complainant has been within the knowledge of the world for time predating Christ. It has been in the world since at least the time of King David of Israel which is recorded in the Old Testament Book of II Samuel, chapter 5, verse 7 dating to about c.630-540 BCE. "Zion" commonly referred to a specific mountain near Jerusalem - "Mount Zion" – on which stood a jobsite fortress of the same name "Zion" that was conquered by David and then named the City of David. The word "Zion" is historically recognized world-wide and had been in the world –wide public domain for centuries; Complainant has an illegitimate, exclusive protected right to the word.
Respondent asserts that owning a trademark to a single century-old word does not grant any right or privileges that that single word so as to preclude other individuals, companies, entities name, products, and domains from using that single centuries-old word when a part of the name of some other entity, name, product or domain. To assert such is an abuse of trademark.
Respondent states that Complainant does not possess exclusive right to the name or word "Zion's" or "Zions" even in the State of Utah; there are currently 117 companies registered with the Secretary of State having the word "Zion's" or "Zions": in their name, including: "Zions Investment Securities" that is affiliated with Complainant. Another company (Christian Neilsen) in Morgan, Utah owns <zions.com>. The Utah Secretary of State has authority to refuse registration to a company if its name is in conflict with prior registered names and it is apparent with 117 of the Utah companies: "Zion's" or "Zions" in its name that no Utah law is being violated.
Respondent further states there are otherwise at least 1,864 registered companies worldwide and 1,419 companies in the United States of America with the name "Zion" or "Zion's" in their name.
Respondent's acquisition of the Disputed Domain Names was legal and not in violation of any state or federal law as those Disputed Domain Names were freely and equally available to the entire world for purchase at the time lawfully acquired. No private or governmental legal action has ever been undertaken against Respondent. Nor was the acquisition of the Disputed Domain Names at issue prohibited by any term or policy of employment Respondent Jay Edgington had. Or was Respondent Jay Edgington required by any term of employment to defer from any transaction in a Disputed Domain Names without the prior approval or consent of his employer; Respondent Jay Edgington was an at-will employee without any guarantee or contractual term of employment, but such a condition could have been made a condition of continued employment at any time and was not.
Respondent denies that all of the Disputed Domain Names are identical; and in fact assert that none is identical to Complainant's mark.
Respondent denies that all or any of the Disputed Domain Names are "confusingly similar" to any trademark or service mark of Complainant's - ZIONS or ZIONS BANK or ZIONSBANK.COM.
Respondent denies it has used the Disputed Domain Names in bad faith or that the reasons asserted for the contention from which bad faith can be drawn have any basis in fact or law. No bad faith use is alleged.
Respondent denies that the non-use of a domain name may be a basis for a determination of bad faith. There are many legitimate reasons for non-use of an asset shortly after acquisition.
Respondent denies there is any evidence of any "pattern" or purpose or intent to "disrupt the business of Complainant" and none had been pled.
Respondent Jay Edgington denies that they acquired the Disputed Domain Names "contemporaneously with, or subsequent to any information they have or as had been announced to, or otherwise furnished any of them. No Respondent was an officer nor director of Complainant, had any inside information, sought none, and learned of Complainant's announced contemplated name change at the same time as others is the public to whom the announcement was made on May 21, 2014 with one purchase made thereafter was that was not same name as the name announced.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
Complainant has three registered trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM. Respondent asserts that none of these registered marks is enforceable in this proceeding, apparently because the name "Zion" is either generic or geographical because of its Biblical origin referring to Mount Zion or commonly to Jerusalem.
The question as to whether a mark is or has become generic or is descriptive and hence an unenforceable mark, such that Complainant should not be seen to have "rights" in respect of the mark used and/or registered has been presented to a number of UDRP panels. The UDRP panels have taken different positions regarding the inclusion of defenses that a mark is generic or descriptive. This Panel takes the position that such defenses are beyond the purview of the Panel. The Panel believes that the courts or regulatory authorities are better able to grapple with the question of the generic nature of words and phrases, and the acquisition of secondary meaning. In addition, the summary nature of the procedures under the Rules is not adequate to develop the proof necessary to make an informed decision on these issues. Therefore, the Panel here accepts the registered trademarks as prima facie evidence of the existence of the mark without analysis of Respondent's assertions that the ZIONS, ZIONS BANK and ZIONSBANK.COM marks are generic or geographical and without analyzing secondary meaning. 402 Shoes Inc. d/b/a Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-0223.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> arelegally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant's registered trademark.
Each Disputed Domain Name contains the phrase "zions" which is the dominant portion of Complainant's marks. Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant's marks pursuant to the Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of proof switches to the Respondent. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Respondent has no relationship with or permission from Complainant for the use of Complainant's marks.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Names:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Complainant alleges that Respondent registered the Disputed Domain Names after Complainant had used and registered its marks with full knowledge of Complainant's rights; that Respondent never used the Disputed Domain Names as part of its own bona fide offering of goods or services, but has held the Disputed Domain Names for future use; and Respondent's intent is to divert Complainant's Internet users. This constitutes a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Respondent's contention is that their registration of the Disputed Domain Names was in all ways legal and that no legal or governmental action has ever been taken against Respondent.
The Panel finds that these contentions are insufficient to prove that Respondent has rights and legitimate interests in the Disputed Domain Names. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(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 web site or location or of a product.
The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
Telstra decision established that registration together with "inaction" or "passive use" and other facts can constitute bad faith, and the Telstra decision has since been cited for that proposition and followed by subsequent UDRP panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110.
A second factor found to support a finding of bad faith is Respondent's knowledge of the Complainant's mark when Respondent registered the Disputed Domain Names. Complainant has alleged that Respondent had actual knowledge of the marks due to his employment by an affiliate of Complainant.
Respondent counters that non-use of the Disputed Domain Names is not a grounds for bad faith and that there is no "pattern" evident in their actions.
Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that the Disputed Domain Names was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
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: <zionsadvisors.com>, <zionscapitaladvisors.co>, <zionscapitaladvisors.com>, <zionscapitaladvisors.info>, <zionscapitaladvisors.net> and <zionscapital.com> be transferred to the Complainant.
Richard W. Page
Date: November 2, 2014
1 Which case was subsequently terminated.