WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ZB, N.A dba Zions First National Bank v. WhoisGuard Protected, WhoisGuard, Inc / Mark Global, Zion Bank Ltd

Case No. D2017-2159

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 TechLaw Ventures, PLLC, United States.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc of Panama City, Panama / Mark Global, Zion Bank Ltd of Cambridge, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <zionbank.loan> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2017. On November 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2017, 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 8, 2017 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 9, 2017.

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 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2017.

The Center appointed Richard Tan as the sole panelist in this matter on December 27, 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

The Complainant carries on business in the USA as a national banking association under the name of “Zions First National Bank”. The Complainant has been doing business under that name since June 12, 1890. It owns the following US registered trademarks: No. 2,380,325 for ZIONS, No. 2,381,006 for ZIONS BANK, both registered on August 29, 2000; and No. 2,531,436 for ZIONSBANK.COM registered on January 22, 2002, all in international class 36. Zions Bancorporation, the parent of the Complainant, was the original registrant of the trademarks but subsequently assigned the trademarks to the Complainant.

The disputed domain name resolves to a website relating to banking products and services. The disputed domain name was registered on October 19, 2017.

5. Parties’ Contentions

A. Complainant

The Complainant’s key contentions may be summarized as follows:

The disputed domain name is confusingly similar to the Complainant’s registered marks. A side-by-side comparison of the disputed domain name and the Complainant’s registered marks ZIONS and ZIONS BANK shows that the identical mark is included and recognizable in the disputed domain name with the elimination of the letter “s” in the word “ZIONS”. The disputed domain name also includes the dominant part of the registered marks. As regards the Top-Level Domain (“TLD”) “.loan”, the TLD should be disregarded.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is not 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. The disputed domain name resolves to a website that displays marks that are confusingly similar to the Complainant’s registered marks and includes terms, such as “risk-free” and “bank deposit,” which are common to banking and lending services. Through the use of the disputed domain name and by displaying trademarks that include the term “bank” the Respondent is expressly stating that it is a bank and provides banking services. The use of a domain name that states or implies that the Respondent is a bank, when it is in fact not a bank, does not constitute a bona fide offering of goods or services. The Respondent has not been commonly known by the disputed domain name; 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 use of virtually identical or similar marks in the disputed domain name indicates that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, and intended to take advantage of the goodwill associated with the Complainant’s registered trademarks. The Respondent has engaged in typosquatting with respect to the second-level domain to take advantage of users seeking to find the Complainant’s domain name <zionsbank.com>, and the Complainant’s services offered at that site, but who mistakenly type the disputed domain name. The Respondent is exploiting the goodwill of the Complainant in its trademarks by diverting customers of the Complainant to the Respondent’s website for commercial gain or malicious purposes by creating a likelihood of confusion with the Complainant’s trademarks. By including the Complainant’s registered trademark as the dominant part of the disputed domain name, the Respondent is intentionally creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s illegitimate activity should be considered as manifest evidence of bad faith. The Complainant’s registered marks are well-known and were in wide use at the time the disputed domain name was registered. The fact that the Respondent combined the Complainant’s registered marks in the disputed domain name and displayed content on the website associated with or related to the banking or financial services industry shows that the Respondent knew or should have known about the Complainant’s registered marks at the time it registered the disputed domain name. The Respondent may also use the website in connection with various phishing and fraudulent activities given the misleading use of the disputed domain name and nature of the website.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant has the burden of proving each of the following 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 is registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence adduced by the Complainant as noted above, the Panel has no hesitation in finding that the Complainant has rights in its trademarks ZIONS, ZIONS BANK and ZIONSBANK.COM which have been registered and have been in long use.

It is well accepted that the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. See Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the disputed domain name incorporates the Complainant’s registered marks ZIONS and ZIONS BANK with the exception of the letter “s”. These are the dominant components of the Complainant’s trademarks and also of its trademark ZIONSBANK.COM. The mere omission of the letter “s” is insufficient to prevent a finding of confusing similarity as the dominant feature of the relevant marks is clearly recognizable within the disputed domain name.

It is also well established that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See Section 1.8, WIPO Overview 3.0.

In this case, the inclusion of the dictionary word “bank” in the disputed domain name is therefore insufficient to prevent a finding of confusing similarity.

With regard to the generic TLD “.loan” of the disputed domain name, the TLD is viewed as a standard registration requirement and as such should be disregarded. See Section 1.11.1, WIPO Overview 3.0.

Looking at the disputed domain name in its entirety and applying the above tests, the Panel finds that the disputed domain name is confusingly similar to marks in which the Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof is on the complainant to establish this element of a lack of rights or legitimate interests, where a complainant is able to make out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element of the Policy. See Section 2.1, WIPO Overview 3.0.

The Respondent has not submitted a response to the Complainant’s contentions mentioned above. These contentions include the assertions that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; that the Respondent has not been commonly known by the disputed domain name and is not a licensee of the Complainant’s trademarks and has not otherwise obtained authorization to use the Complainant’s marks; that the Respondent is using the disputed domain name for an illegitimate purpose and is intending for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks.

The Panel accepts the uncontroverted evidence of the Complainant that it has been using its trademarks for many years preceding the date of the Respondent’s registration of the disputed domain name on October 19, 2017. The Respondent used as part of the disputed domain name dominant features of the Complainant’s trademarks. It must have known of the Complainant’s trademarks and long standing reputation in the field of banking services. Its website also displayed trademarks that include the term “bank” representing that it provides banking services where there is no evidence that the Respondent actually carries on or has carried on any such legitimate business.

Both the use of the website with the confusingly similar disputed domain name and the misleading contents of the website, as further discussed below in relation to the third element of bad faith, suggest that the Respondent intended and intends for commercial gain to divert potential customers of the Complainant to the Respondent’s website. This is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the evidence shows that the Respondent’s deliberate use of the disputed domain name in connection with its website creates a misleading impression of association with the Complainant and creates no rights or legitimate interests in the disputed domain name.

In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that a complainant must, in addition to the matters set out above, demonstrate that the relevant disputed domain name has been registered and is being used in bad faith.

UDRP paragraph 4(b) provides that bad faith may be evidenced by a number of circumstances including, but not limited to, the use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See Section 3.14, WIPO Overview 3.0.

In this case, the Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trademarks. As also discussed above, the Respondent has no legitimate interests in the disputed domain name. Indeed, on the evidence, the Respondent must have known about the Complainant’s long reputation as a bank prior to its registration of the disputed domain name and deliberately chosen and used the confusingly similar disputed domain name primarily to ride upon and take unfair advantage of the Complainant’s reputation and goodwill by attempting to mislead customers and members of the public into thinking that the Respondent’s website was associated with the Complainant and directing them to the Respondent’s website. This is clear evidence of bad faith registration and use.

Additionally, the Respondent’s website indicates or implies that the Respondent is a bank and provides banking services although there is no evidence that it has been licensed to provide legitimate banking services. However, the website does carry links to certain competitive products and advertising links. This is further evidence of bad faith registration and use.

Further, as contended by the Complainant, the Respondent’s website is likely to be used for illegitimate activities such as phishing or other fraudulent activities. This represents a real ongoing threat to the Complainant and as such also constitutes further evidence of bad faith use.

In all the circumstances, the Panel concludes and finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 <zionbank.loan> be transferred to the Complainant.

Richard Tan
Sole Panelist
Date: January 9, 2018