WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A dba Zions First National Bank v. Alvin Black
Case No. D2017-0801
1. The Parties
Complainant is ZB, N.A dba Zions First National Bank of Salt Lake City, Utah, United States of America, represented by TechLaw Ventures, PLLC, United States of America.
Respondent is Alvin Black of Spanish Fork, Utah, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <zionsblog.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 April 20, 2017. On April 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. Emails were received from Respondent on May 03, 2017. The Response was filed with the Center on May 16, 2017.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on May 26, 2017. 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, ZB, N.A., offers banking services under the name Zions First National Bank and has been offering banking services under the Zions First National Bank name since 1890. Complainant is the owner of trademark registrations in the United States for ZIONS BANK (Registration No. 2,381,006), ZIONSBANK.COM (Registration No. 2,531,436) and ZIONS (Registration No. 2,380,325), the earliest of which dates back to August 29, 2000.
The disputed domain name was registered in or about October 2009, but Respondent may have acquired the disputed domain name in or about 2010. The disputed domain name currently resolves to a parked page generated by GoDaddy.com, the registrar of the disputed domain name, that features a number of links to third party websites.
5. Parties' Contentions
Complainant asserts that it has used the ZIONS mark in commerce since at least as early 1891, the ZIONS BANK mark in commerce since 1992 and the ZIONSBANK.COM mark in commerce since 1995 (collectively Complainant's ZIONS marks"). Complainant further contends that given its longstanding use of its ZIONS mark in connection with financial services, Complainant's ZIONS marks are well-known in the United States.
Complainant contends that the disputed domain name is confusingly similar to Complainant's ZIONS marks because it contains the ZIONS mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the word "blog" does not dispel confusion, because the dominant portion of the disputed domain name is ZIONS and thus Internet users may believe there is a connection between the disputed domain name and Complainant's products and services.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, is not in any way affiliated with or licensed by Complainant, and has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent has used the disputed domain name in connection with a parking or landing page that features links to products or services that compete with those of the Complainant.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent must have known or should have known of Complainant's well-known ZIONS marks, as Respondent registered a domain name that includes the identical ZIONS mark. Complainant further argues that because the disputed domain name resolves to a website that contains advertising links, and in particular links to third party sites offering competing financial services, Respondent is exploiting the goodwill associated with Complainant's ZIONS mark for commercial gain or malicious purposes. Lastly, Complainant contends that because the disputed domain name is confusingly similar to Complainant's ZIONS mark, and given the many prior UDRP decisions that ruled in favor of Complainant, the result should be no different here and should be consistent with prior decisions that ruled in favor of Complainant and which ordered the transfer of numerous disputed domain names.
Respondent denies the assertions of Complainant and asks the Panel to deny the remedies requested by Complainant.
Respondent argues that the disputed domain name is not confusingly similar to Complainant's ZIONS marks as "Zion" is a common word with a recognized religious meaning, and its plural and possessive forms are "Zions" and "Zion's" respectively. Respondent maintains that use of "Zion" or "Zions" by itself cannot be confused with Complainant's banking and financial services because of the religious connotation associated with the word "Zion." Respondent further contends that the addition of the word "blog" to the disputed domain name does not create confusion with banking and financial services as the definition of the word "blog" is different from the definition of the word "bank" which is used by Complainant for its services, and "blog" has no inherent financial-related meaning. Respondent maintains that if any confusion exists it would be as a result of Complainant's own actions, such as purchasing ads on Google's "partner network," not preventing third parties from purchasing ads through Google based on Complainant's trademarks, and recently registering and using the domain name <zionsbankblog.com>. Such actions by Complainant, Respondent argues, has resulted in links appearing on the parked page associated with the disputed domain name.
Respondent argues that he has a legitimate interest in the disputed domain name as he registered such for a business he is developing that will allow customers to obtain a "vanity" URL for their personal blogs or email. Respondent also maintains that a review of his domain name portfolio reveals that Respondent has registered multiple domain names based on religious terms, especially those related to the Church of Latter Day Saints, or to blogging. Respondent further contends that there is no evidence that Respondent has ever been engaged in a pattern of registering domain names based on the trademarks of others.
While Respondent acknowledges that he was aware of Complainant's business, Respondent asserts that he was more aware of the religious connotation for the word "Zion" and, as such, did not register the disputed domain name thinking of Complainant. Respondent asserts that he was not aware of Complainant's trademark registrations for ZIONS, but that even had he known of Complainant's claim to own exclusive rights in ZIONS for banking and financial services he would have had no reason to believe that registration of the disputed domain name that combines a religious term with the word "blog" would cause any confusion with Complainant's financial services. Respondent further asserts that the links that appeared on the website associated with the disputed domain name were auto-generated by GoDaddy and Google and were not the result of any actions by Respondent, and that upon receiving the Complaint, Respondent immediately disabled all advertising appearing on the website associated with the disputed domain name. Respondent also argues that Complainant never contacted GoDaddy or Google to remove or eliminate use of Complainant's marks on parked pages, including the page at the disputed domain name. Lastly, Respondent contends that Complainant's assertions that the disputed domain name might be used for malicious activities is baseless, particularly as there is no evidence of such and Respondent did not seek to conceal his identity or use false contact information.
Respondent also makes reference to purported communications with Complainant's counsel after the Complaint was filed in which the parties allegedly discussed a resolution of the matter. No agreement appears to have been reached, but, according to Respondent, Complainant attempted to solicit an offer from Respondent to sell the disputed domain name thereby establishing that Complainant's purpose for filing the Complaint was to acquire the disputed domain name and not to protect its trademarks. Based on these communications and the facts in the mater, Respondent requests that the Panel make a finding of reverse domain name hijacking.
6. Discussion and Findings
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.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), paragraph 1.2.1. Complainant has provided evidence that it owns and uses the ZIONS, ZIONS BANK, and ZIONSBANK.COM marks for financial services, which have been registered and in use in the United States before Respondent registered the disputed domain name.
With Complainant's rights in the ZIONS, ZIONS BANK, and ZIONSBANK.COM 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 ".com") is identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant's ZIONS marks as it incorporates the ZIONS mark in its entirety at the head of the disputed domain name. The addition of the word "blog" does not distinguish the disputed domain name from Complainant's ZIONS marks, as the dominant component of the disputed domain name is ZIONS. WIPO Overview 3.0, paragraphs 1.7 and 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant's ZIONS marks and in showing that the disputed domain name is identical or confusingly similar to those trademarks.
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. 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.
From the record in this case, it is arguable whether Respondent has rights or a legitimate interest in the disputed the domain name. On one hand, the evidence submitted by the parties shows that Respondent acquired the disputed domain name in or about 2010, never used such in connection with any product or service, and allowed the disputed domain name to be used (at least in or around the time prior to this proceeding being filed) with a cash parking web page provided by GoDaddy that featured links to various financial offerings, including those referring to Complainant's financial services. Presumably Respondent obtained some benefit from the cash parking page – a point that Respondent does not contest in his response.
On the other hand, Respondent maintains that he registered the disputed domain name for purposes of a business he is developing that will allow customers to obtain a "vanity" URL for their personal blogs or email. Respondent has argued that he used the term "Zions" in the disputed domain name because of its religious connotation and not on account of Complainant and its financial services. In that regard, the Panel notes that the word "Zion" is a common term that has both religious (e.g., the Hebrew name for the Temple Mount in Jerusalem or a reference to heaven) and non-religious connotations (such as a future utopia). Thus while Complainant has established rights in ZIONS with respect to financial services in the United States, such rights do not, in and of themselves, extend to all uses of "Zion" or to its plural/possessive forms "Zions" or "Zion's," particularly when such uses do not relate to financial services.
Here, the disputed domain name does not immediately conjure up a financial connotation. The use of the word "blog" in connection with "Zions" does not suggest banking or other financial services and could be seen as simply being a reference to a blog dedicated to religious or non-religious connotations of the term "Zion" or to other entities or businesses that use the "Zion" name such as the national park in Utah known as "Zion National Park."
However, as to whether Respondent acquired the disputed domain name for his alleged business, the evidence of record does not establish that such a business in fact existed or is even in development. The fact that Respondent registered many domain names with religious connotations or related to blogging does demonstrate that Respondent has had a proclivity for registering domain names that could be used with such an alleged business activity, but it does not demonstrate that Respondent ever took any active steps for developing or launching such an actual business. The disputed domain name has been held by Respondent for almost seven years and there is no evidence in the record that Respondent ever took steps to use the disputed domain name for his alleged business. The only evidence regarding the use of the disputed domain name is its recent use in connection with a cash parking page with links to various offerings, including those referencing Complainant and/or competing financial services.
Based on the submissions made by the Parties, it is hard for the Panel to conclude that the Respondent has a legitimate interest in or made a bona fide or legitimate use of the disputed domain name. Respondent is responsible for what appears on a web page associated with a domain name he owns. Indeed, Respondent admits that he was aware of Complainant and its banking services and admits that he had no difficulty in having GoDaddy remove the links that appeared on the web page associated with the disputed domain name after the Complaint was filed. Consequently, Respondent could have taken steps at any time to prevent the disputed domain name from being used with a cash parking service that contained links to Complainant or to competing financial services. Respondent, however, took no such action and only did so after this proceeding was initiated.
Given that Complainant has established with sufficient evidence that it owns rights in Complainant's ZIONS marks, and given Respondent's above-noted actions and that the evidence shows that a number of the links at the web page associated with the disputed domain name have related to financial services, the Panel finds that Complainant has demonstrated with sufficient evidence Respondent's lack of rights or legitimate interest, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to [Respondents'] web site or other on-line location, by creating a likelihood of confusion with [Complainant's] mark as to the source, sponsorship, affiliation, or endorsement of [Respondents'] web site or location or of a product or service on [the] web site or location."
In his response, Respondent maintains that he did not register the disputed domain name with an intent of taking advantage of Complainant's ZIONS marks for financial services. Respondent claims that when he registered the disputed domain name he did so thinking of the term "Zion" for its religious connotations and for purposes of his alleged vanity email business. While Respondent has not submitted any evidence showing that he has developed an actual vanity email business or taken any actual steps to launch such a business (apart from submitting some unspecified "Code Snippet" of claimed software being developed by Respondent), the record evidence does not establish that Respondent registered the disputed domain name for purposes of taking advantage of Complainant's ZIONS marks.
The disputed domain name, from a textual standpoint, does not include a financial term and does not per se relate to financial services. Further, Respondent has registered a large number of domain names based on religious or blogging terms, thereby suggesting that Respondent had a penchant for obtaining domain names in these categories and perhaps for purposes of his claimed business. There is also no evidence in the record that Respondent has ever registered or used domain names based on the trademarks of others or that Respondent has ever been found to have registered or used domain names in bad faith. Lastly, Complainant's only evidence of use of the disputed domain name is with a fairly recent cash parking page from GoDaddy. There is no evidence in the record showing the type of use that was made of the disputed domain name in 2010, when Respondent apparently acquired the disputed domain name, or in the intervening years until in or about May 2017. While such evidence might exist, Complainant did not include anything that would suggest, by a preponderance of the evidence, that in 2010 Respondent registered the disputed domain to take advantage of Complainant's ZIONS marks as opposed to registering such for purposes of a blog related to "Zion," in its common religious or non-religious connotations. The mere fact that the use of the disputed domain name as of the time of this proceeding commenced was for a web page with sponsored links, including some links related to financial services, generated by GoDaddy does not mean, without more, that Respondent originally registered the disputed domain name (which consists of the common term "Zion" found in English language dictionaries) in bad faith. That parking page evidence might show bad faith current use, but in this Panel's view insufficiently establishes bad faith registration in 2010 by a preponderance of the evidence. In other words, there is more evidence tending to show that it was not bad faith registration than there is showing that it was bad faith registration.
As an aside, it should be noted that Complainant's reliance on prior UDRP decisions which ruled in Complainant's favor is misplaced. Some of the decisions cited by Complainant do not even relate to Complainant's ZIONS marks and concern rights in other marks not at issue in this proceeding, such as AMEGY and CALIFORNIA BANK AND TRUST. Moreover, those decisions which relate to Complainant's ZIONS marks concern domain names that clearly related to Complainant's financial services, such as <zionzbank.com>, <zionsbamk.com>, and <zionsfirstnationalbank.com>. Thus, while these decisions may support the notion that Complainant has strong rights in Complainant's ZIONS marks in relation to financial services, they do not establish that this Respondent's registration of the disputed domain name, which does not have a clear financial connection, was necessarily done in bad faith; at least not on the record before the Panel.
In sum, the Panel finds that there is insufficient evidence that Respondent registered the disputed domain name in bad faith. Therefore, this Panel finds for Respondent on the third element, in accordance with paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Section 15(e) of the Rules give instruction to panels in this regard:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
As stated previously, Complainant established that it has used ZIONS in relation to its banking services since 1890 and that it owns trademark registrations in the United States for Complainant's ZIONS marks that date back to well before the disputed domain name was registered. The Panel has also found that the disputed domain name shares the same first term and that Respondent has used, at least recently, the disputed domain name for a web page featuring links concerning Complainant and/or its financial services. Accordingly, the Panel finds that Complainant did not initiate this UDRP proceeding in bad faith or primarily to harass Respondent.
The request for a finding of reverse domain name hijacking is denied.
For the foregoing reasons, the Complaint is denied.
Date: June 13, 2017