Administrative panel decision zions Bancorporation V. Dong Hui/Zhongjiayuan




Yüklə 45.03 Kb.
tarix09.03.2016
ölçüsü45.03 Kb.




ARBITRATION
AND
MEDIATION CENTER



ADMINISTRATIVE PANEL DECISION

Zions Bancorporation v. Dong Hui/Zhongjiayuan

Case No. D2014-1139



1. The Parties

The Complainant is Zions Bancorporation of Salt Lake City, Utah, United States of America (“US”), represented by Callister Nebeker & McCullough, US.


The Respondent is Dong Hui/Zhongjiayuan of Hangzhou, Zhejiang, China.


2. The Domain Name and Registrar

The disputed domain name is registered with Hangzhou AiMing Network Co., LTD (the “Registrar”).




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2014. On July 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2014, 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 the Notification of Complaint Deficiency to the Complainant on July 4, 2014, providing the registrant and contact information disclosed by the Registrar. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 8, 2014.


On July 4, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. The Respondent submitted its request that Chinese be the language of the proceeding on July 5, 2014 and the Complainant submitted its request that English be the language of the proceeding on July 8, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on July 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on August 7, 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.


4. Factual Background

The Complainant is the owner of the following trademarks registered with the United States Patent and Trademark Office: ZIONS BANK, Registration No. 2,381,006, ZIONSBANK.COM, Registration No. 2,531,436, and ZIONS, Registration No. 2,380,325. These registered marks are in use by the Complainant and registered for financial services.


Since July 5, 1995, the Complainant has been the registrant of the domain name , from which Complainant advertises and offers its banking services. In addition, since May 28, 1999, the Complainant has been the registrant of the domain name , from which the Complainant provides information about its family of banks offering banking and financial services.
The Respondent registered the disputed domain name on May 14, 2014.



5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:


1. The disputed domain name contains the name “zions” that is identical to the dominant part of Complainant’s registered marks ZIONS BANK and ZIONSBANK.COM, and is identical to ZIONS, and is otherwise confusingly similar to these registered marks.
2. Through the use of Complainant’s marks, 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 Complainant’s marks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. 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. 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. In contrast, based exclusively on the WhoIs database information, the Respondent acquired the registration for the disputed domain name no earlier than May 14, 2014.
2. The Respondent is not a licensee of Complainant’s trademarks, and has not otherwise obtained authorization to use Complainant’s marks.

3. The Respondent is not using the disputed domain name as part of a bona fide offering of goods or services. Instead, the Respondent appears to be using the disputed domain name to provide various banking-related search queries that direct consumers to the websites of third parties.


4. The use of Complainant’s marks in the disputed domain name and on the Respondent’s website is misleading and may divert consumers to this website instead of the Complainant’s official and authorized website.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The Respondent registered the disputed domain name that contains the dominant portion of and is identical or virtually identical to the registered marks ZIONS BANK, ZIONSBANK.COM, and ZIONS, and the disputed domain name is confusingly similar to such marks.
2. The disputed domain name leads to a website that provides direct or indirect links to various banking related and other search queries, which identify services that are identical or similar to the type of services offered by the Complainant under its registered marks.
3. The use of 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.
4. The Respondent has also displayed the mark ZIONS on the website associated with the disputed domain name.
5. While there may be insufficient information available to confirm that the website using the disputed domain name is operated by a competitor, the Respondent is clearly trying to divert customers of the Complainant from the Complainant’s website to the Respondent’s website by using the dominant portion of the Complainant’s marks in the disputed domain name and on the Respondent’s website.
6. Furthermore, by using the dominant portion of Complainant’s marks in the disputed domain name and on the associated website, the Respondent is intentionally creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

B. Respondent

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




6. Discussion and Findings



6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English. The reasons are as follows:
1. The Complainant is an organization in the US, and conducts all of its business in English.
2. All of the terms included in the disputed domain name are in English, and the Respondent chose to register a domain name in English.
3. The Respondent has registered at least three other domain names that include English terms that relate to banking, including , and .
4. The Complainant is unable to communicate in Chinese. The Complainant is not in a position to conduct these proceedings in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint and the supporting annexes. It would not be fair to the Complainant to be forced to conduct the proceedings in Chinese. See Goyard St-Honore v. Baizhi Zhang, WIPO Case No. D2013 0897.
5. The language on the website associated with is English which suggests that the Respondent is conversant in English.
6. It appears that the Respondent is also the respondent in another proceeding in which the panelist found that the respondent was familiar with the English language, and that the Respondent would not be unduly prejudiced by conducting the proceedings in English. See Swiss Re Ltd. v. xiongqingyi/Mr. Donghui, WIPO Case No. D2014-0065.
Despite the Respondent’s objection, and after considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that it is appropriate that the decision be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11(a) of the Rules provides:
“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.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. In particular, the Panel notes that the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the language on the website associated with is English; (c) that a prior panel has found the Respondent to be conversant in the English language; and (c) the Center has notified the Respondent of the proceeding in both Chinese and English. In this particular case, the Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complaint. Considering these circumstances, the choice of English as the language of the present decision is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the decision will be rendered in English.
6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed 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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the ZIONS/ZIONS BANK marks in connection with financial services in the US.


In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking to purchase or download information about the Complainant’s products.
The disputed domain name consists of the dominant part of the Complainant’s ZIONS/ZIONS BANK trademark with the addition of the term “bancorpration” and the gTLD suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “zions” which is identical to the Complainant’s registered trademark ZIONS. The addition of the term “bancorpration” does not provide sufficient distinction from the Complainant’s trademark. In fact, the term appears as a deliberate misspelling of the term “bancorporation” that is found in one of the Complainant’s registered domain name . Instead of distinguishing the disputed domain name from the Complainant’s trademark, this has contrary effect of heightening possible consumer confusion. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” being the generic Top-Level Domain (“gTLD”) is not typically a distinguishing factor.
Bearing in mind the following factors, in particular the distinctive character of the Complainant’s ZIONS/ZIONS BANK trademark and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:


1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “zionsbancorpration” in its business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the ZIONS/ZIONS BANK trademark;
3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
4. On the contrary, the disputed domain name is currently connected to a website which provides various banking-related search queries that direct consumers to the websites of third parties in competition with the Complainant. The Panel finds that the Respondent therefore does not have the right to use the ZIONS/ZIONS BANK mark in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith




Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or


(ii) a respondent has 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) a respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a 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.
The above circumstances are indicative of registration and use of the disputed domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the disputed domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. This conclusion coupled with the fact that the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name, gives rise to the need for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.
Where the Respondent has chosen to register the disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the Respondent has failed to provide an explanation of its choice in the disputed domain name, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to demonstrate that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent is using the disputed domain name to connect to a website which provides various banking-related search queries that direct consumers to the websites of third parties in competition with the Complainant. The Panel finds that the Respondent therefore does not have the right to use ZIONS/ZIONS BANK marks in the disputed domain name. Such behaviour on the part of the Respondent is indicative of bad faith registration and use. The Respondent should explain its choice of the disputed domain and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that a lack of plausible explanation for the choice of incorporating the Complainant’s trademark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to connect to a website which provides various banking-related search queries that direct consumers to the websites of third parties in competition with the Complainant to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites, are certainly relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test.


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 be transferred to the Complainant.



Susanna H.S. Leong

Sole Panelist



Date: August 20, 2014



Verilənlər bazası müəlliflik hüququ ilə müdafiə olunur ©azrefs.org 2016
rəhbərliyinə müraciət

    Ana səhifə