WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Early Warning Services, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Ross Gray

Case No. D2021-0095

1. The Parties

The Complainant is Early Warning Services, LLC, United States of America, represented by Bryan Cave Leighton Paisner, United States of America.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ross Gray, Australia.

2. The Domain Name and Registrar

The Disputed Domain Name <login-zelle.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was initially filed for four domain names with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2021. On January 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. In addition, the Registrar indicated that two of the Disputed Domain Names were available for registration. Accordingly, the Complainant sent an email to the Center withdrawing the latter Disputed Domain Names from this dispute on February 11, 2021.

The Center sent an email communication to the Complainant on February 12, 2021, providing the registrant and contact information disclosed by the Registrar for the remaining two Disputed Domain Names, and inviting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; or file a separate complaint. The Complainant filed an amended Complaint on February 16, 2021, removing one of the Disputed Domain Names from this dispute.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2021.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 30, 2021. 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, and its related and affiliated entities and licensees, is a leading digital payment networks. Complainant’s Zelle electronic payment services enable individuals and companies to easily, quickly, and safely transfer money between bank accounts.

The Complainant holds numerous trademark registrations for the ZELLE term and variations thereof in the United States of America (“United States”) and around the world, among others:

- ZELLE, United States Trademark Registration No. 5,277,307, registered on August 29, 2017;

- ZELLE United States Trademark Registration No. 5,449,233, registered on April 17, 2018; and

- ZELLE | THIS IS HOW MONEY MOVES United States Trademark Registration No. 5,298,235 registered on September 26, 2017, for “financial transaction services, namely, providing secure payment and money transfer options” and “payment processing services,” in International Class 36.

In addition, the Complainant also owns numerous domain names comprising the ZELLE trademark, including <zellepay.com>, registered since March 8, 2016.

The Respondent registered the Disputed Domain Name on January 20, 2021. At the present, the Disputed Domain Name is currently inactive. However, the Complainant submitted evidence that the Disputed Domain Name resolved to a pay-per click (“PPC”) website.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant contends that the Disputed Domain Name is identical to the Complainant’s ZELLE trademark except that it merely adds the generic term “login”, which does not reduce the likelihood of confusion and, in fact, enhances consumer confusion because logging in is a fundamental element of the Complainant’s payment transfer services.

Rights or legitimate interest

The Complainant alleges that the Respondent is not in any way associated with the Complainant and has never sought or received authorization or a license to use the Complainant’s ZELLE trademarks in any way or manner.

The Complainant further alleges that ZELLE trademarks are well known - as stated in previous URDP decisions -, and its ZELLE services are used by more than 800 financial institutions and by millions of users around the world.

In addition, the Respondent is not commonly known as “Zelle” or any variation thereof. Upon information and belief, the Respondent has not sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for “Zelle” or any variation thereof.

As such, the Disputed Domain Name is registered for and used to lure consumers to an imposter’s site for commercial gain. Consequently, the Respondent is not making any legitimate noncommercial use of the Disputed Domain Name.

Registration and use in bad faith

The Complainant alleges that the Respondent registered and used the Disputed Domain Name in bad faith.

The Complainant contends that the Respondent uses the Disputed Domain Name to divert potential users away from Complainant’s primary website for its own commercial benefit.

The Complainant further states that the Respondent registered the Disputed Domain Name, which wholly incorporates the Complainant’s trademark and merely adds the non-distinctive term “login” is passively holding the site as parked pages with links to third party commercial websites.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in the 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.

A. Identical or Confusingly Similar

Based on the evidence submitted, this Panel finds that the Disputed Domain Name <login-zelle.com> is confusingly similar to the Complainant’s trademark ZELLE. The Disputed Domain Name wholly incorporates the Complainant’s trademark.

The Disputed Domain Name only differs from the Complainant’s trademark with the addition of the term “login” with a hyphen separating each term. The addition of such term does not prevent a finding of confusing similarity with the Complainant’s trademark.

Moreover, the addition of the Top-Level Domain (“TLD”) “.com” does not change this finding, since the TLD is generally disregarded in such an assessment of confusingly similarity.

Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

“(i) before any notice to you of the dispute, your use of, 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 (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 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 at issue.”

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the ZELLE trademark.

The Respondent has failed to show that it has acquired any rights with respect to the term “Zelle” or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

As such, this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered on January 20, 2021, while the Complainant’s United States trademark Registration No. 5,449,233, ZELLE was registered on April 17, 2018. In addition, the Complainant’s ZELLE trademark is well known as it has been recognized by previous decisions under the Policy (Early Warning Services, LLC v. Contact Privacy Inc. Customer 1242726540 / Andy Bang, Amer Group Inc, WIPO Case No. D2020-2572). This clearly shows that the Respondent was well aware of the Complainant’s trademark at the time of registering the Disputed Domain Name and it proceeded with the registration of the Disputed Domain Name.

The Respondent did not reply to the Complainant’s assertions. The Panel is of the view that the Respondent knew of the Complainant’s trademark and prior rights.

Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

In the case at hand, the Respondent’s registration of a domain name confusingly similar to the Complainant’s ZELLE trademark, used for PPC links associated with the Complainant services, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and its failure to respond to the Complaint, constitutes bad faith.

Due to this conduct, it is obvious that the Respondent intentionally created a likelihood confusion with the Complainant’s trademark and websites in order to attract Internets users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.

While the Disputed Domain Name is currently inactive, the change in the use of the Disputed Domain Name does not alter the Panel’s findings.

Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name.

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, <login-zelle.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: April 13, 2021