WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ZB, N.A., dba Zions First National Bank v. Domain Admin Whois Privacy Corp / Ryan G Foo, PPA Media Services

Case No. D2016-2297

1. The Parties

The Complainant is ZB, N.A., dba Zions First National Bank of Salt Lake City, Utah, United States of America ("United States") represented by John Rees Law, PLLC, United States.

The Respondent is Domain Admin Whois Privacy Corp of Nassau, Bahamas / Ryan G Foo, PPA Media Services of Santiago, Chile.

2. The Domain Name and Registrar

The disputed domain name <zioinsbank.com> is registered with TLD Registrar Solutions Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2016. On November 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2016 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 November 17, 2016 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 amendment to the Complaint on November 22, 2016

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 15, 2016.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 21, 2016. 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 does business under the name Zions First National Bank since 1890.

The Complainant is the owner of the following trademarks registered with the United States Patent and Trademark Office ("USPTO"): ZIONS BANK, registration number 2,381,006, registered on August 29, 2000; ZIONSBANK.COM, registration number 2,531,436 registered on January 22, 2002 and ZIONS, registration no. 2,380,325, registered on August 29, 2000. Zions Bancorporation, the parent company of the Complainant, was the original applicant and registrant of these trademarks, which were subsequently assigned to the Complainant. These registered marks are 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, Zions Bancorporation has been also the registrant of the domain name <zionsbank.com>, from which the Complainant advertises and offers its banking services.

The Respondent registered the disputed domain name <zioinsbank.com> on November 8, 2013.

The Panel accessed the disputed domain name on January 2, 2017, which resolved to a pay-per-click parking page advertising banking services under links such as "Zions Bank", "Bank Account Loans", "Zions Bank Online Banking", "Business Banking Account", "Online Baking Savings", etc.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant's registered marks ZIONS BANK, ZIONSBANK.COM and ZIONS are recognizable in the disputed domain name, with the addition of the letter "i" after the letter "o" in ZIONS. The threshold test for confusing similarity under the UDRP involves a comparison between the trademarks and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademarks would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. The disputed domain name includes the dominant part of Complainant's registered marks ZIONS BANK, ZIONSBANK.COM and ZIONS. The disputed domain name is otherwise confusingly similar to these registered marks. There is a risk that Internet users may believe there is a connection between the disputed domain name and the Complainant's products and services. By including the Complainant's registered marks and the dominant part of other of the Complainant's registered marks, 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 for commercial gain. Using the Complainant's marks ZIONS, ZIONS BANK and ZIONS, the disputed domain name directs consumers, either directly or indirectly, to a website that references various banking terms and links to financial services, and likely confuses consumers as to the source of the goods being offered under the Complainant's marks. The Respondent has engaged in typosquatting to take advantage of users seeking to find the website connected to the Complainant's domain name <zionsbank.com>, and the services offered at that site, but who mistakenly type the disputed domain name. A domain name which contains obvious misspelling of trademarks will usually be found to be confusingly similar to trademarks, if the misspelled trademarks are the dominant or principal part of the disputed domain name.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has been using its ZIONS mark in commerce since at least as early as 1891, and obtained federal registration for such mark on August 29, 2000. The 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. The Complainant has been using its ZIONSBANK.COM mark in commerce since at least as early as 1995, and obtained federal registration for such mark on January 22, 2002. Based exclusively on the WhoIs database information, the Respondent acquired the registration for the disputed domain name no earlier than November 8, 2013. Before filing this Complaint, the Complainant has not been aware of any evidence of 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. Instead, the disputed domain name resolves to a website that is displaying competing financial services. A parking page does not by itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name. The Complainant is not aware that 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 trademarks or service mark rights. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not a licensee of the Complainant's trademarks, and has not otherwise obtained authorization to use the Complainant's marks. The Respondent is not using the disputed domain name as part of a bona fide offering of goods or services, or for a legitimate noncommercial use.

- The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name incorporating the registered marks ZIONS, ZIONS BANK and ZIONSBANK.COM, with the exception of the typosquatting, and therefore the disputed domain name is confusingly similar to such marks. The use of virtually identical or similar marks in the disputed domain name indicates that it was registered primarily for the purpose of disrupting the business of the Complainant, and appears to be intended to take advantage of the goodwill associate with the Complainant's federally registered trademarks. The Respondent is clearly trying to exploit the goodwill of the Complainant and its trademarks by diverting customers of the Complainant from the Complainant's website to the Respondent's website for commercial gain or malicious purposes by creating a likelihood of confusion with the Complainants trademarks. The Respondent is intentionally creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. The use of Complainant's marks in the disputed domain name is misleading and may divert consumers to this website instead of the Complainant's official and authorized website. Bad faith registration of a domain name can be found when the respondent "knew or should have known" about the existence of the complainant's trademarks, especially where the complainant's marks are well-known or in wide use at the time the domain name was registered. The Respondent is responsible for the content appearing on the website associated with the disputed domain name. The Respondent has apparently not made any good faith efforts to prevent the inclusion of advertising links on such website. The use of the disputed domain name is misleading, and the Respondent may also use it in connection with various phishing and fraudulent activities. The Respondent's use of Complainant's marks may tarnish Complainant's trademarks. Although in some cases the use of a domain name that resolves to a parking or landing page may be permissible, that is not the case in this matter where the links are to competitive products and services of the Complainant. The apparent lack of active use of a domain name does not prevent a finding of bad faith. The disputed domain name has been registered using a privacy or proxy service. Although this factor by itself may not be sufficient to form the basis of bad faith registration, when combined with other factors addressed in this complaint, it is an indication of bad faith registration. The Complainant, or its affiliates, has prevailed on several prior complaints for domain names that include the Complainant's registered marks, and that are similar to the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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.

A. Identical or Confusingly Similar

The Panel has no doubt that "zions" and "zions bank" are terms directly connected with the Complainant's banking activities.

Exhibit 3 to the Complaint shows trademark registrations for ZIONS, ZIONS BANK and ZIONSBANK.COM with the USPTO, obtained by the Complainant respectively since 2000 and 2002.

The trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM are wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant's trademark ZIONSBANK.COM merely by the addition of the letter "i" between the letters "o" and "n" of the term "zions".

Therefore, the disputed domain name consists of a misspelling of the Complainant's trademarks. This practice is commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors made by Internet users seeking the complainant's commercial website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201)

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is 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 at issue.

Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that the present record provides no evidence to demonstrate the Respondent's intent to use or to make preparations to use the domain names in connection with a bona fide offering of goods or services. Indeed, the disputed domain name links to a website reproducing the Complainant's trademark and even offering competing banking services.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why he has chosen the specific term "zioinsbank" to compose the disputed domain name.

Therefore, the present record provides no evidence to demonstrate the Respondent's intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent (in November 2013) the trademark ZIONS – and its variations ZIONS BANK and ZIONSBANK.COM – was already well known and directly connected to the Complainant's activities in the banking business.

The disputed domain name consists of a misspelling of the trademark ZIONSBANK.COM.

The website currently published at the disputed domain name also reproduces the trademarks ZIONS and ZIONS BANK.

Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant's trademark, as well as that the adoption of the expression "zioinsbank" together with the generic Top-Level Domain ("gTLD") extension ".com" could be a mere coincidence.

Furthermore, the disputed domain name is currently being linked to a pay-per-click parking page advertising banking services in direct competition with the Complainant's financial services. In doing so, the Respondent:

(i) creates a likelihood of confusion with the Complainant's trademark;

(ii) potentially obtains revenue from this practice; and

(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant.

Former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

Furthermore, the passive and non-collaborative posture of the Respondent, not at least providing justifications for the use of a misspelling version of a third-party trademark, certainly cannot be used in benefit of the Respondent in the present case.

Such circumstances, associated with the use of privacy services and the lack of any plausible explanation for the adoption of the term "zioinsbank" by the Respondent, are enough in this Panel's view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of 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 <zioinsbank.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: January 4, 2017