Complainant is Comerica Bank, United States of America (“United States”), represented by Bodman PLC, United States.
Respondent is Super Privacy Service LTD c/o Dynadot, United States.
The disputed domain name <comericavoicesafe.com> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2019, 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 January 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 12, 2020.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on February 21, 2020. 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.
Complainant is a financial services company that has over USD 70 billion in assets Complainant has bank locations in the states of Texas, California, Michigan, Arizona, and Florida as well as locations in Mexico and California. Complainant also sponsors the Detroit Tigers Major League Baseball stadium Comerica Park and the Comerica Theatre in Phoenix, Arizona.
Complainant is the owner of the following United States Registrations:
COMERICA (Registration No. 1,251,846) for “banking services” with first use of 1982.
COMERICA and Design (Registration No. 1,776,041) for “banking services” with first use of 1992.
COMERICA VOICESAFE (Ser. No. 88/336764, Applied on 03/12/2019) for “on-line non-downloadable computer software application using telephone print and voice recognition technology to authenticate customer identity when accessing financial records and accounts.”
Complainant owns 46 marks on the United States Patent and Trademark Office (“USPTO”) that incorporate COMERICA.
Complainant owns domain registrations for <comerica.com>, <comerica.net>, and <comerica.org>.
The disputed domain name was registered on March 15, 2019, and resolves to a parking page where the disputed domain name is for sale.
Complainant’s COMERICA mark is coined, distinctive, and powerful, and symbolizes the goodwill of the Complainant. Complainant invests millions of dollars every years in the promotion of the products and services identified under the COMERICA mark. As a result of its long use and widespread commercial recognition, the Mark is famous under United States federal and state trademark laws.
The disputed domain name incorporates the COMERICA mark in its entirety. The disputed domain name is identical to a federal trademark application for COMERICA VOICESAFE.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not granted Respondent a license or otherwise permitted Respondent to use the COMERICA mark or the disputed domain name. There is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services. Respondent registered the disputed domain name only two days after Complainant filed its application for COMERICA VOICESAFE.
There is no evidence that Respondent has been commonly known by the disputed domain name or if Respondent has acquired no trademark or services mark rights. Respondent’s identity is shielded by a Privacy Services and the disputed domain name is linked to a website that does not identify the Respondent. There is no evidence Respondent is making a legitimate non-commercial or fair use of the disputed domain name. Respondent uses the domain to offer the domain for sale for USD 990 which is valuable consideration in excess of a plausible costs related to its registration or holding. Respondent does not own and cannot lawfully obtain any trademark or intellectual property rights in the COMERICA mark.
The disputed domain name is registered in bad faith because of the suspicious timing of the registration of the disputed domain name indicates Respondent’s awareness of Complainant’s rights in the COMERICA mark. Respondent knew or should have known that the disputed domain name is confusing similar to COMERICA given that Complainant had used its well-known mark since 1982. The disputed domain name resolves to a website that advertises the sale of the domain for USD 990 which evidences Respondent registered the domain name for the purpose of selling it for valuable consideration in excess of Respondent’s costs related to the registration of the domain name.
Respondent’s bad faith is also shown through its use of a privacy service to hide its identity and Respondent’s inaction after receiving correspondence from Complainant which was sent on March 19, 2019 and followed up on July 3, 2019.
Respondent has no legitimate interest in the disputed domain name and no connection to Complainant and there is no plausible use of the disputed domain name by Respondent that would not infringe Complainant’s intellectual property rights.
The disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or to a competitor of Complainant.
Respondent did not reply to Complainant’s contentions.
Complainant has demonstrated it owns registered trademark rights in the COMERICA mark and that no other entity has rights or uses the mark. The disputed domain name incorporates Complainant’s COMERICA mark in its entirety as well as Complainant’s pending COMERICA VOICESAFE application. The addition of the generic Top-Level Domain (“gTLD) “.com” is insufficient to avoid a finding of confusing similarity.
Accordingly, the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name, and has not at any time been commonly known by the disputed domain name. The fact that Respondent obtained the disputed domain name two days after Complainant filed an application for COMERICA VOICESAFE with the USPTO indicates that Respondent sought to obtain a windfall based on the sale of the disputed domain name to Complainant or Complainant’s competitors.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name rather the evidence suggests that it was registered to make an undue profit based on Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei, WIPO Case No. D2013-1556.
In the absence of any evidence rebutting Complainant’s prima facie case indicating Respondent’s lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The disputed domain name was registered many years after Complainant first registered and used its COMERICA mark and more significantly registered two days after Complainant applied to register COMERICA VOICESAFE. The evidence on the record provided by Complainant with respect to the extent of use of its COMERICA trademark, combined with the absence of any evidence provided by Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, Respondent most likely knew of Complainant’s COMERICA mark, and knew that it had no rights or legitimate interests in the disputed domain name. Complainant has provided evidence that the disputed domain name is offered for sale for USD 990 which likely only has one legitimate buyer namely Complainant. This establishes to the Panel Respondent acquired the disputed domain name primarily for the purpose of selling it to Complainant for a sum significantly in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name – which, according to paragraph 4(b)(i) of the Policy, is evidence of registration and use of the disputed domain name in bad faith.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <comericavoicesafe.com> be transferred to Complainant.
Colin T. O’Brien
Sole Panelist
Date: March 6, 2020