Zacks Investment Research, Inc. v Justin Welson

WIPO Case No. D2024-2729

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Zacks Investment Research, Inc. v. Justin Welson

Case No. D2024-2729

1. The Parties

Complainant is Zacks Investment Research, Inc., United States of America (“United States”), represented by

Latimer LeVay Fyock LLC, United States.

Respondent is Justin Welson, United States.

2. The Domain Name and Registrar

The disputed domain name <zackprimetrading.com> is registered with OwnRegistrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2024.

On July 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On July 4, 2024, 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 July 16, 2024. In accordance with the Rules, paragraph 5, the due date

for Response was August 5, 2024. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on August 6, 2024.

On August 8, 2024, the Center received an email communication from Respondent regarding the matter.

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The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 8, 2024.

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, Zacks Investment Research, Inc., is a provider of independent financial research and

investment related content. Complainant, through its subsidiary Zacks Investment Management, also

manages client assets worth over $11 Billion USD. Lastly, the owner of Complainant also operates a

website at <zackstrade.com> that allows individual investors to trade certain financial instruments.

Complainant owns several United States trademark registrations that incorporate the name and mark

ZACKS. These include a registration for ZACKS alone (Registration No. 5,652,428) which issued to

registration on January 15, 2019, and several ZACKS formative marks, including by way of example, ZACKS

ULTIMATE (Registration No. 5,683,596) which issued to registration on February 26, 2019, ZACKS RANK

(Registration No. 5,664,114) which issued to registration on January 29, 2019, and ZAKS PREMIUM

(Registration No. 5,683,593) which issued to registration on February 26, 2019. Complainant also owns and

operates a website at <zacks.com> for its services. Complainant’s subsidiary, Zacks Investment Manager,

also operates a website at <zacksim.com>.

Respondent, who is purportedly based in the United States, looks to have registered the disputed domain

name on June 6, 2024. At some point thereafter, Respondent posted a website at the disputed domain

name offering financial trading services. Respondent also set up the disputed domain name for email

purposes. Currently, the disputed domain name does not resolve to an active website or page.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

disputed domain name.

Notably, Complainant contends that it has rights in the ZACKS name and mark through its use of the mark

since 1978 in connection with its financial services and through Complainant’s trademark registrations for the

ZACKS mark.

Complainant argues that the disputed domain name is confusingly similar to its ZACKS mark as the disputed

domain name simply drops the letter “s” from the ZACKS mark and is then coupled with the non-distinctive

words “prime trading”, which are associated with financial trading and related services.

Complainant asserts that Respondent does not have rights or a legitimate interest in the disputed domain

name as Respondent (i) is not affiliated with or licensed by Complainant, (ii) is not commonly known by the

disputed domain name, (iii) is using the disputed domain name for a website offering financial trading

services under the name “Zack Prime Trading” and for email purposes. With regard to the website posted at

the disputed domain name, Complainant further asserts that the website and disputed domain name have

been associated with scam websites.

Lastly, Complainant maintains that the disputed domain name has been registered and used in bad faith as

the domain name consists of Complainant’s ZACKS mark with the generic phrase “prime trading”, and has

been used for a website claiming to offer identical services as those of Complainant. Additionally,

Complainant contends that Respondent has acted in bad faith by setting up the disputed domain name for

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email purposes which carries a high risk of implied affiliation given the confusing similarity between the

disputed domain name and Complainant’s ZACKS trademark.

B. Respondent

Respondent did not reply to Complainant’s contentions. On August 8, 2024, the Center received a

communication from Respondent , who appeared to claim some connection to an alleged undisclosed,

underlying owner of the disputed domain name. In that email, Respondent advised that “that the domain in

question hav been deactivated from my end” and “[t]his action will remain in effect until we receive feedback

from the domain owner. I trust that you understand the necessity of this measure and agree with the steps

taken to protect your client’s trademark rights”.

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

It is well accepted that the first element functions primarily as a standing requirement. 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. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.7.

Here, Complainant has shown rights in its ZACKS mark for purposes of the Policy. WIPO Overview 3.0,

section 1.2.1. The Panel finds that the disputed domain name is confusingly similar to Complainant’s

ZACKS mark as the disputed domain name fully incorporates the ZACKS mark without the letter “s” at the

head of the disputed domain name, and the ZACKS mark remains sufficient recognizable in the disputed

domain name. Although the addition of other terms, here the words “prime trading”, may bear on the

assessment of the second and third elements, the Panel finds the addition of such words does not prevent a

finding of confusing similarity between the disputed domain name and Complainant’s ZACKS mark for

purposes of the Policy. WIPO Overview 3.0, section 1.8.

The first element of the Policy has thus been established by Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or

legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized

that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or

legitimate interests, the burden of production on this element shifts to the respondent to come forward with

relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

proof always remains on the complainant). If the respondent fails to come forward with such relevant

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evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,

section 2.1.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that

Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted

Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating

rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or

otherwise.

Respondent’s registration of the disputed domain name that is clearly based on the ZACKS mark does not

seem coincidental, particularly as Respondent has used the disputed domain name to offer competing

financial services. Moreover, because the disputed domain name fully incorporates a close version of the

ZACKS mark without the letter “s” in conjunction with the phrase “prime trading”, a phrase that is often used

in the financial industry, the disputed domain name is likely to be mistakenly seen by consumers as related

to Complainant and its various financial services under the ZACKS mark. As such, it is hard to see how

Respondent could have any rights or legitimate interests in the disputed domain name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.

In view of Respondent’s actions, and failure to explain any rights or legitimate interests in the disputed

domain name, it is easy to infer that Respondent’s registration and use of the disputed domain name, which

is clearly based on Complainant’s ZACKS mark, to offer competing financial services has been done

opportunistically and in bad faith for the benefit or profit of Respondent. The disputed domain name on its

face suggests a connection to Complainant and its various ZACKS financial products and services and was

registered well after Complainant had established rights in its ZACKS mark. In all, Respondent’s actions

make it more probable than not that Respondent was fully aware of Complainant and its ZACKS name when

it registered the disputed domain name for purposes of offering competing financial services.

The Panel thus finds that Complainant has established 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 <zackprimetrading.com> be transferred to Complainant.

/Georges Nahitchevansky/

Georges Nahitchevansky

Sole Panelist

Date: August 22, 2024