Westmore · UDRP DecisionZionsbusinessbanking.com
The Panel ordered transfer of <zionsbusinessbanking.com>. It found the domain confusingly similar to the Complainant’s ZIONS, ZIONS BANK, and ZIONSBANK.COM marks because the added phrase “business banking” described the Complainant’s services. The Respondent did not rebut the Complainant’s prima facie showing that he lacked rights or legitimate interests. Bad faith was established from the use of the domain for links, including apparently competitive links, intended to divert users and generate click-through revenue, together with the Panel’s findings concerning the Respondent’s knowledge of the Complainant’s prior rights.
The timeline behind zionsbusinessbanking.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind zionsbusinessbanking.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates how a domain combining a trademark with terminology that directly describes the trademark owner’s services may strengthen, rather than dispel, confusing similarity. It also shows the evidentiary importance of website captures displaying competitive or sponsored links and of an undisputed assignment agreement when assessing rights or legitimate interests.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Zions Bancorporation v. Jim Pearl Case No. D2014-0007 1. The Parties The Complainant is Zions Bancorporation of Salt Lake City, Utah, United States of America, represented by Callister Nebeker & McCullough, United States of America. The Respondent is Jim Pearl of Cottonwood Heights, Utah, United States of America. 2. The Domain Name and Registrar The disputed domain name <zionsbusinessbanking.com> is registered with Register.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2014. On January 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 14, 2014, the Center received a suspension request from the Complainant. On the same day, the Center formally notified the parties and the Registrar of the suspension of the proceeding until February 13, 2014. On February 10, 2014, the Complainant filed an amended Complaint in response to the Center’s email of January 7, 2014. Upon the Complainant’s request, the proceeding was re-instituted on February 11, 2014. The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceeding commenced on February 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2014. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on March 4, 2014. The Center appointed Carol Anne Been as the sole panelist in this matter on March 11, 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. On March 21, 2014, Administrative Panel Procedural Order No. 1 (“Order No. 1”) was issued by the Panel. The Complainant submitted a response to Order No. 1 on March 21, 2014. Pursuant to Order No. 1, the Respondent was allowed to submit any sur-reply limited to points made in any of the Complainant’s submissions by no later than March 29, 2014. The Respondent did not submit any sur-reply. 4. Factual Background The Complainant provided evidence from the United States Patent and Trademark Office demonstrating its ownership of United States trademark registrations for the word marks ZIONS BANK, ZIONSBANK.COM and ZIONS, which were issued in 2000, 2002 and 2000, respectively. The description of services covered by these registrations includes financial services, namely banking. The Complainant alleges that it is the owner of a website at “www.zionsbank.com”, from where the Complainant advertises and offers its banking services. The Complainant is located in Utah, United States. The disputed domain name was created on November 21, 2013, according to the WhoIs record. The Respondent is located in Utah, United States. The Complainant alleges that the Respondent is using the disputed domain name to provide links and various banking-related and other search queries that direct consumers to third-party websites, some of which offer services that are identical or similar to those that the Complainant offers under its marks. The Center provided an image of the website at the disputed domain name as of February 11, 2014, which includes reference to at least one competitor of the Complainant and appears to include links to other websites, some of which are likely to offer services competitive with those rendered under the Complainant’s trademarks. The Complainant also provided evidence of a signed Settlement Agreement effective as of January 13, 2014, by and between the Complainant and the Respondent whereby the Respondent assigned the disputed domain name to the Complainant. The Complainant alleges that despite the Settlement Agreement, the Respondent has failed to take the necessary steps to carry out the transfer of the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its ZIONS BANK, ZIONSBANK.COM and ZIONS trademarks. The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established that it holds rights in the trademarks ZIONS BANK, ZIONSBANK.COM and ZIONS and that it uses such trademarks in connection with banking services, since prior to the Respondent’s registration of the disputed domain name. The phrase “business banking” in the disputed domain name is descriptive of the services offered by the Complainant. The disputed domain name consists of the Complainant’s ZIONS mark, followed by the descriptive phrase “business banking”. The disputed domain name also consists of each of the Complainant’s ZIONS BANK and ZIONSBANK.COM marks, plus the word “business” between the words “Zions” and “Bank” and the addition of the letters “ing” to the word “Bank”. The addition of a term that describes the services offered by the Complainant under its mark does not avoid the confusing similarity of the disputed domain name with the Complainant’s trademark. See , e.g., eBay Inc. v. ebayMoving / Izik Apo , WIPO Case No. D2006-1307 (“It is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks”). Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests The Respondent has not provided any evidence of circumstances to demonstrate rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent is not a licensee of the Complainant’s trademarks and has not obtained authorization to use the Complainant’s trademarks. The Complainant also claims that the Respondent’s use of the disputed domain name is not a bona fide offering of goods or services. The Complainant’s evidence of a Settlement Agreement between the parties assigning the disputed domain name to the Complainant effective as of January 13, 2014, has not been disputed by the Respondent. Therefore, the Panel concludes that the Complainant has shown a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut such prima facie case by providing the Panel with any evidence to show that the Respondent has rights or legitimate interests in the disputed domain name. See , e.g., The Vanguard Group, Inc. v. Lorna Kang , WIPO Case No. D2002-1064 (“A number of panels have held that the burden on a complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain name lies most directly within the registrant’s knowledge. Other panels have held that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.”); Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael , WIPO Case No. D2009-0942 (“In short, Complainant has satisfied its burden of providing sufficient evidence to show that the Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names.”). Thus, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Evidence of bad faith arises when, among other things, a respondent registers the disputed domain name primarily for the purpose of disrupting the business of a competitor or, by using the disputed domain name, attempts to attract, for commercial gain, users to its website by creating a likelihood of confusion with the complainant’s mark. In this case, the Respondent has used the disputed domain name in a manner that is likely to cause confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, apparently in an attempt to capture traffic from consumers looking for the Complainant’s website and to direct such consumers instead to the Respondent’s website associated with the disputed domain name. The website at the disputed domain name has posted links for websites, some of which appear to compete with services rendered under the Complainant’s trademarks, with the apparent intention of generating “click through revenue” for the Respondent. Such links may be understood as intended to attract traffic for the Respondent’s commercial gain. See , e.g., F. Hoffman-La Roche AG v. DOMIBOT , WIPO Case No. D2006-0327 (“[B]y using the domain names for search engine websites, that provide sponsored links to other websites, the Respondent attempts to attract Internet users for commercial gain to these websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites […] Such exploitation of trademarks to obtain click-through commissions from the diversion of internet users has been considered in many decisions to be a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy.”); Villeroy & Boch AG v. Mario Pingerna , WIPO Case No. D2007-1912 (“The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the sponsored links and pop-up advertisements on its website.”). In this Panel’s view, when the disputed domain name was registered in 2013, the Respondent had constructive knowledge of the Complainant’s pre-existing trademark rights and registrations under United States trademark law. See , e.g., Champion Broadcasting System, Inc. v. Nokta Internet Technologies , WIPO Case No. D2006-0128 (“The Panel notes that both parties are located in the USA and the principle of constructive notice can be applied in accordance with the Rules, Paragraph 15.”). Further, the fact that the Complainant and the Respondent are both located in Utah would suggest that the Respondent likely had actual knowledge of the Complainant and its trademarks at the time the Respondent registered the disputed domain name. Absent any statement from the Respondent to the contrary, the Panel may infer that the Respondent cannot refute the Complainant’s allegations of bad faith. See , e.g., The Vanguard Group v. Lorna King , supra (“There is no direct evidence that the Respondent knew of Complainant or its VANGUARD trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.”). Thus, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. 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 <zionsbusinessbanking.com> be transferred to the Complainant. Carol Anne Been Sole Panelist Date: April 1, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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