Why Are You Making Me Do All This Extra Work?

Steve Levy ⬥ 8 December

For UDRP Panelists, some cases are very straightforward and obvious and it takes very little time to draft a decision. However, every once in a while, along comes a case which should be very straightforward and obvious, but one of the parties just doesn’t quite see it that way.

And so it is with a recent dispute over the domain name zionsbank.xyz. The Complainant is a well-known financial institution based in Salt Lake City, Utah and has used its registered trademark since the early 1990s. The Respondent, based in Perth, Australia, resolves the domain name to a pay-per-click (PPC) website with links to various financial institutions, some of which are competitors of the Complainant. Despite his geographic remoteness from Utah, the Respondent does not claim that he has never heard of Zions Bank but, instead, heaps upon the Panel a wide and creative range of defenses, most of which flirt with basic principles of trademark law but ultimately show a refusal to accept the reality of the situation.

The Respondent claims that: the Complainant’s trademark doesn’t include the letters “xyz”; the domain name differs from the Complainant’s mark since it is all in lower-case letters; the word “Zion” has descriptive meaning such as being both a biblical and geographic reference; many other trademarks incorporating the word Zion have been used for centuries; and the Complainant cannot know the Respondent’s true intentions for the disputed domain name.

In what should have been a simple decision consisting of a couple of paragraphs for each of the three UDRP elements, the Panel felt compelled to address each of the Respondent’s contentions and knock them down one at a time. On the question of confusing similarity, the Panel pointed out that the case of the letters in a domain name is irrelevant, that use of the .xyz top-level domain does not reduce confusion with the well-known Zions Bank brand, and the existence of other third-party Zion trademarks has no impact since the first UDRP element is a mere threshold question and only the domain name and the Complainant’s trademark need be compared.

Next, as to whether the Respondent has any rights or legitimate interest in the domain name, the fact that the domain name resolves to PPC links to other financial institutions precludes the creation of such rights or interest. Further, the Respondent’s claim to have unrealized plans and intentions for the domain name cannot be taken seriously where the Respondent has not seen fit to disclose the details of those plans, let alone supply evidence to support them.

Finally, although the word Zion has some descriptive meaning, the Respondent chose to follow it with the word “bank” and provided no reason for the Panel to think that this combined term could identify anyone other than the Complainant. He also addressed the Respondent’s argument that none of the PPC links at the zionsbank.xyz website directly refer to the Complainant, but dismissed this claim by holding that the Respondent created “initial interest confusion” with the Zions Bank mark (visitors may not realize, until after they’ve seen the website, that there is no connection to the Complainant, but might still click on one of the links and earn revenue for the Respondent).

Ultimately, after likely taking a couple of hours to consider and draft a decision that should have taken 30 minutes, the Panel ordered that the domain name be transferred to Complainant. One could look at this as giving the Respondent its due process and allowing it to submit any defense it so desired. And while I’m a huge fan of due process, there’s a part of me that feels this resulted in nothing but a lot of wasted time and energy for all concerned.

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