The Complainant is Comerica Incorporated of Detroit, Michigan, United States of America, represented by Miller, Canfield, Paddock & Stone, PLC, United States of America.
The Respondents are PrivacyProtect.org, Domain Admin, of Nobby Beach, Queensland, Australia / Venkateshwara Distributor Private Limited of Mumbai, Maharashtra, India.
The disputed domain name <wwwcomerica.com> is registered with Tirupati Domains and Hosting Pvt Ltd..
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2011. On October 7, 2011, the Center transmitted by email to Tirupati Domains and Hosting Pvt Ltd. a request for registrar verification in connection with the disputed domain name. On October 10, 2011, Tirupati Domains and Hosting Pvt Ltd. 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 an email communication to the Complainant on October 11, 2011 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 October 14, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2011.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 17, 2011. 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.
The Complainant is a Michigan, United States of America (“USA”) Corporation and is one of the USA’s oldest and largest holding companies engaged in banking and investment services. The Complainant is the owner of a range of registered trademarks for the word mark COMERICA in various territories including USA trademark registration no. 1251846 filed on September 13, 1982 and registered on September 20, 1983 in international class 36 (banking services). The Complainant also owns a variety of registered trademarks in the USA in respect of its “family” of COMERICA marks including inter alia COMERICA PARK, COMERICA WEB BANKING FOR BUSINESS and COMERICA GLOBAL TRADE WEB.
The disputed domain name was created on October 27, 2004. The disputed domain name is used to direct consumers to a landing page featuring links to websites which refer to financial and banking services that ultimately resolve at websites belonging to the Complainant’s competitors.
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondents have no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name contains the name and mark COMERICA under which the Complainant does business and for which it holds registered trademarks. The Complainant also notes that it is the owner of the domain name <comerica.com> which was registered on September 19, 1995. The Complainant submits that the addition of “www” does not distinguish the disputed domain name from the Complainant’s COMERICA mark and that the suffix “.com” is non-distinctive because it is required for the registration of the disputed domain name.
The Complainant submits that in registering the disputed domain name, the Respondents have engaged in typosquatting, a practice by which a registrant deliberately introduces slight deviations into famous marks for commercial gain. The Complainant states that because the Respondents’ registration of the disputed domain name constitutes typosquatting, the disputed domain name is, by definition, confusingly similar to the Complainant’s trademarks. The Complainant also asserts that the disputed domain name is phonetically similar to the Complainant’s trademark, further heightening the likelihood of confusion.
The Complainant notes that the Respondents have failed to respond despite the Complainant sending the Respondent, PrivacyProtect.org, a cease and desist letter on September 27, 2011 and despite the Center having issued the Complainant and both Respondents, Venkateshwara and PrivacyProtect.org, with the Notice of Change in Registrant Information. The Complainant states that it has never assigned, licensed or granted permission to the Respondents to commercially utilize the Complainant’s COMERICA trademark. The Complainant asserts that there is no evidence of the Respondents’ use 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.
The Complainant submits that the Respondents use the disputed domain name to divert consumers who are looking for the Complainant’s products and services on the Internet to competing financial and banking related websites for commercial gain. The Complainant asserts that such activity is not a legitimate, bona fide use and does not confer legitimate interests in the disputed domain name. The Complainant notes that the Respondents have not acquired any trademark, service mark or common law rights in the disputed domain name and submits that the Respondents as businesses are not commonly known, nor do they hold themselves out as <wwwcomerica.com>. The Complainants also state that the Respondents are not making a legitimate noncommercial or fair use of the disputed domain name given their intent, for commercial gain, to misleadingly divert consumers or to tarnish the Complainant’s trademark.
The Complainant submits that the disputed domain name, being an example of typosquatting, of itself is evidence of bad faith registration. The Complainant asserts that the disputed domain name resolves to websites that feature links to various websites of at least seven competing financial services and banking institutions. The Complainant believes that the Respondents receive click through fees for featuring such links on the website connected with the disputed domain name. The Complainant submits that consumers accessing the disputed domain name may become confused as to the Complainant’s affiliation or sponsorship of the resulting websites because the disputed domain name is confusingly similar to Complainant’s trademark. The Complainant contends that such competing use constitutes evidence of bad faith registration and use pursuant to the Policy.
The Complainant submits that the Respondents have also been found to have registered other disputed domain names in bad faith under similar circumstances and appear to be engaged in a pattern of registering and using domain names in bad faith, quoting TRS Quality, Inc. v. Privacy Protect, WIPO Case No. D2010-0400; Allstate Insurance Company v. Callum Macgregor/Privacy--Protect.org, WIPO Case No. D2011-0244; Oneida Ltd v. PrivacyProtect.org, WIPO Case No. D2011-1199; IKEA Systems B.V. v. PrivacyProtect.org, WIPO Case No. D2011-0451; H Samuel Limited v. PrivacyProtect.org and Venkateshwara, WIPO Case No. D2009-0973; DIRECTV, Inc. v. Venkateshwara Distributor Private Limited, WIPO Case No. D2011-1346; and Allianz SE v. Venkateshwara Distributor Private Limited/PrivacyProtect.org, WIPO Case No. D2010-0951.
The Complainant submits that the Respondents’ inclusion of goods and services competing with the Complainant’s marks on the website associated with the disputed domain name evidences that the Respondents had actual knowledge of the Complainant’s rights. The Complainant also asserts that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondents’ out-of-pocket costs directly related to the disputed domain name. The Complainant also asserts that the Respondents have improperly used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondents’ website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondents’ website or location or of a product or service on the Respondents’ website or location.
The Respondents did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been 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.
The Complainant has demonstrated to the satisfaction of the Panel that it has rights in the registered trademark COMERICA. The trademark is incorporated in its entirety within the disputed domain name together with the generic element “www”. This element is commonly used at the third level of a generic top level domain name signifying “world wide web”, such as is found, for example, in the uniform resource locator for the Complainant’s website at “www.comerica.com”. When this uniform resource locator is entered by an Internet user into a web browser, the user will be directed to the Complainant’s website. However, any users who inadvertently fail to type the dot after the “www” element will not have entered the third level domain controlled by the Complainant but will instead have typed the Respondents’ disputed domain name into their browser and will thus be directed to the Respondents’ website. If the disputed domain name was deliberately selected and registered by either of the Respondents in order to capture and take advantage of such mistaken traffic then that Respondent has engaged in so-called “typosquatting”. This will be discussed in the rights and legitimate interests and bad faith sections below. For the purposes of the first element of the Policy, however, the Panel requires to make an objective comparison between the Complainant's trademark and the disputed domain name, taking into consideration the additional “www” component.
Whether the “www” element is seen as a generic word, which does not distinguish the disputed domain name from the Complainant’s trademark, or whether it is seen as an inclusion made for the purposes of typosquatting, the end result is the same in that the disputed domain name is inherently confusing and such confusion arises due to its similarity to the Complainant’s trademark. In the present case this similarity is exacerbated by the fact that the disputed domain name is almost identical to the uniform resource locator of the Complainant’s principal website and is simply missing the third level “dot”.
In these circumstances, the Panel has no hesitation in finding that the disputed domain name is confusingly similar to the Complainant’s trademark and accordingly that the first element under the Policy has been established.
Paragraph 4(c) of the Policy lists several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 non-commercial 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Complainant asserts that it has never assigned, licensed or granted permission to the Respondents to commercially utilize the Complainant’s trademark and that there is no evidence of the Respondents’ use 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. The Complainant adds that the fact that the disputed domain name has been used for the purposes of typosquatting and to resolve to a website featuring links to the Complainant’s competitors cannot be considered a legitimate bona fide use, nor could it be regarded as noncommercial or fair use.
In the Panel's view, the Complainant has made out a compelling prima facie case that neither of the Respondents has any rights or legitimate interests in the disputed domain name. Indeed, given the present use of the disputed domain name and the fact that, as indicated in the above section, it is in the style of a relatively common typosquatting domain name which seeks to take advantage of Internet users inadvertently missing off the dot from the uniform resource locator of the Complainant’s website, it is difficult to conceive of any legitimate use to which either of the Respondents could put the disputed domain name. The Respondents have neither replied to the Complainant’s communications nor responded to the contentions in the Complaint and have thus provided no alternative explanation as to any rights or legitimate interests which they might have had in the disputed domain name.
In all of these circumstances, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name and thus that the second element of the Policy has been established.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
It is clear from the UDRP decisions of Lernco, Inc. v. Venkateshwara Distributor Private Limited, WIPO Case No. D2009-1012, H Samuel Limited v. PrivacyProtect.org and Venkateshwara, WIPO Case No. D2009-0973, DIRECTV, Inc. v. Venkateshwara Distributor Private Limited, WIPO Case No. D2011-1346, and Allianz SE v. Venkateshwara Distributor Private Limited/PrivacyProtect.org, WIPO Case No. D2010-0951, that the second Respondent, i.e. Venkateshwara Distributor Private Limited, has a history of registering and using domain names in bad faith, and in particular has made a domain name registration for the purposes of typosquatting on at least one occasion in the past. This in itself can be an indicator of bad faith in respect of the disputed domain name.
The Complainant in the present matter makes a compelling case, in the view of the Panel, that the disputed domain name was registered for the purposes of typosquatting. This is an unavoidable conclusion given the style of the disputed domain name, incorporating as it does, both “www” and the Complainant’s trademark, being both components of the uniform resource locator of the Complainant’s principal website. Once the Respondents have captured mistaken traffic as outlined above, the Complainant points out that this is diverted to the website associated with the disputed domain name which contains links to competitors of the Complainant. It is likely that one or other, or both of the Respondents receive, or intended to receive, click through revenue from this activity. In these circumstances, the Panel finds that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website pursuant to paragraph 4(b)(iv) of the Policy.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and used in bad faith and accordingly that the third element under the Policy has been established.
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 <wwwcomerica.com> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: November 29, 2011