Zions Bancorporation, N.A. v Nadegda Isakova

WIPO Case No. D2022-4764

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Zions Bancorporation, N.A. v. Nadegda Isakova

Case No. D2022-4764

1. The Parties

The Complainant is Zions Bancorporation, N.A., United States of America (“United States”), represented by

TechLaw Ventures, PLLC, United States.

The Respondent is Nadegda Isakova, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <zions-bank.online> (the “Domain Name”) is registered with Registrar of Domain

Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2022. On December 13, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 14, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Private Person) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 2022, 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 amended Complaint on December 22, 2022.[1]

[1] The original Complaint related to the Domain Name and the domain name <zionsbank.fun>. In result of the verification response

On December 20, 2022, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. On December 22, 2022, the Complainant confirmed its request that English be the language of the proceeding and provided arguments in support of its request. The Respondents did not comment on the language of the proceeding.

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

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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 in both English and Russian, and the proceedings commenced on December 28, 2022. In
accordance with the Rules, paragraph 5, the due date for Response was January 17, 2023. The Respondent
did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18,

2023.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 3, 2023. 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 is a banking and financial services company. It operates the Zions First National Bank.

The Complainant is the owner of the following trademark registrations relevant to this proceeding

(collectively referred to as the “Trademarks”):

- the United States Trademark Registration ZIONS No. 2380325 registered on August 29, 2000; and

- the United States Trademark Registration ZIONS BANK No. 2381006 registered on August 29, 2000.

The Domain Name was registered on July 5, 2022.

At the time of the filing of the Complaint, the Domain Name resolved to a website purporting to be the website displaying an information that it is temporarily suspended.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Name be transferred to the Complainant. According to the case.

First, the Complainant submits that the Domain Name is identical or confusingly similar to the Trademarks in which the Complainant has rights.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the

Domain Name.

Third, the Complainant contends that the Domain Name was registered and is being used in bad faith.

B. Respondent

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

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6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in the Domain Name; and

(iii)      the Domain Name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of
probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel

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

A. Language of the Proceeding

The language of the Registration Agreement for the Domain Name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative

proceeding”. The Panel may also order that any documents submitted in a language other than that of the
proceeding be translated.

As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

The Complainant has submitted a request that the language of the proceeding be English. The Complainant argues that it conducts all of its business in English and is not familiar with the Russian language. Moreover, the Complainant notes that the Domain Name and the content of the Website are in English. Finally, the

Complainant contends that conducting this proceeding in Russian would lead to additional expense and delay.

The Panel agrees that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Moreover, the Panel notes that the Respondent did not comment on the language of the proceeding, even though it was notified in English and Russian regarding the language of the proceeding.

Thus, taking these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.

B. Identical or Confusingly Similar

The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.

The Complainant holds valid ZIONS and ZIONS BANK trademark registrations which precede the registration of the Domain Name. The Domain Name incorporates these Trademarks in their entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a

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domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL
(a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).

The Domain Name differs from the Complainant’s ZIONS BANK trademark merely by the addition of a hyphen separating the terms “zions” and “bank”. It is well established that use or absence of punctuation marks, such as hyphens, does not alter the fact that a trademark is recognizable within the disputed domain name. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656.

The generic Top-Level Domain (“gTLD”) “.online” in the Domain Name is viewed as a standard registration
requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1,

WIPO Overview 3.0.

Given the above, the Panel finds that the Domain Name is almost identical to the Complainant’s ZIONS

BANK trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.

The respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i)        that it has used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii)       that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(iii)      that it 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.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

On the contrary, it results from the evidence in the record that the registrations of the Complainant’s has been commonly known by the Domain Name.
Trademarks predate the registration of the Domain Name. There is no evidence in the record that the
Complainant has licensed or otherwise permitted the Respondent to use the Trademarks or to register the

Moreover, it does not result from the evidence in the record that the Respondent makes use of the Domain Name in connection with a bona fide offering of goods or services, or it makes a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain. At the time of submitting the

Complainant, the Domain Name resolved to the Website that appeared highly similar (if not identical) to the Complainant’s official website. Such use of the Domain Name does not confer rights or legitimate interests on the Respondent. Furthermore, the Panel finds that the Domain Name is inherently misleading. See
section 2.5.1, WIPO Overview 3.0.

Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s prima facie case. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

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D. Registered and Used in Bad Faith

The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1, WIPO Overview 3.0.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation:

(i)        circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of- pocket costs directly related to the domain name; or

(ii)       circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii)      circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv)      circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s Trademarks at the time of registration of the Domain Name. This finding is supported by the content of the Website mimicking the Complainant’s official website. Moreover, as it has been proven to the Panel’s satisfaction that the Complainant’s Trademarks are well known and unique to the Complainant. Thus, the Respondent could not likely reasonably ignore the reputation of products and services under these	As indicated above, the Complainant’s rights in the Trademarks predate the registration of the Domain taking advantage of the reputation of the Complainant’s Trademarks.
Finally, the Respondent’s use of a privacy service that concealed registrant information is a further evidence of bad faith.
For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under 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 Domain Name <zions-bank.online> be transferred to the Complainant.
/Piotr Nowaczyk/ Piotr Nowaczyk Sole Panelist Date: February 17, 2023

transmitted by the Registrar, on December 12, 2022 the Complainant submitted the request to withdraw the domain name <zionsbank.fun> from the Complaint. Accordingly, the underlying amended Complaint is subject only to the Domain Name.