The Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America (“United States”).
The Respondent is Rodica Ilea of Cluj-Napoca, Romania.
The disputed domain name <comerica-com.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2013.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on December 12, 2013. 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 financial services company headquartered in Dallas, Texas, United States. In addition to Texas, the Complainant has bank locations in Arizona, California, Florida, and Michigan, United States as well as in Canada and Mexico. The Complainant is the owner of many trademarks and service marks in the United States, including:
- COMERICA, a service mark, Registration No. 1,251,846 for use in “banking services”. This mark has been used by the Complainant in connection with these services since 1982.
- COMERICA, a service mark and Design, Registration No. 1,776,041 for use in “banking services”. This mark has also been used by the Complainant in connection with these services since 1992.
The Complainant is the registrant for, among others, the domain names <comerica.net> and <comerica.com>.
The Complainant’s contentions can be summarized as follows:
The Complainant contends the disputed domain name <comerica-com.com> is confusingly similar to the Complainant’s trademarks because it is comprised of the term “comerica”, a hyphen and the non-distinctive text of the generic Top-Level Domain (“gTLD”) “com”. It is well-established that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Kabushiki Kaisha Toshiba dba Toshiba Corporation v. Wufacai, WIPO Case No. D2006-0768). The dominant component of the disputed domain name is the mark, COMERICA, and the text “-com” does not serve to distinguish the disputed domain name from the mark because “com” is non-distinctive text. The disputed domain name comprised of the mark COMERICA, a punctuation mark, and the non-distinctive text “com” is a confusingly similar domain name to the said mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name because (1) the Respondent is not a licensee of the Complainant’s trademarks and has not otherwise obtained authorization to use the Complainant’s marks; (2) there was no evidence, before any notice to the Respondent of the dispute, of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, (3) the Respondent has acquired no trademark or service mark rights in marks that correspond to the disputed domain name or any portion thereof, (4) there is no evidence that the Respondent has been commonly known by a name corresponding to the disputed domain name or any portion thereof, (5) there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Instead, the evidence shows the disputed domain name accesses a parking page with links where the Respondent presumably receives compensation for every visit by an Internet user. The evidence also shows that some of these links promote financial services that are similar to the financial services provided by the Complainant.
Last, the Complainant contends the Respondent registered and is using the disputed domain name in bad faith because (1) the Respondent must have known of the Complainant’s rights in its marks when registering the disputed domain name since the marks are well known and widely known trademarks, and the website associated with the disputed domain name promotes financial services that are similar to the Complainant’s financial services. When a domain name contains a well-known mark such as COMERICA, a finding of bad faith may be made where the respondent “knew or should have known”, of the registration and/or use of the trademark prior to registering the domain name (Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028), (2) the disputed domain name accesses a parking page with links. This use evidences that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location. It is a well-known practice to display on a web page or search engine various links to other commercial websites, where every link activated by an Internet user enables the host of the search engine to collect financial compensation proportional to the number of connections. It is established that this practice constitutes bad faith use (Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062), (3) the Respondent’s action of registering the disputed domain name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant’s business, deceive consumers, and trade off of the Complainant’s goodwill by creating an unauthorized association between it and the marks. The Complainant further asserts that the Respondent’s use of the disputed domain name indicates a blatant attempt to misappropriate the Complainant’s well-established, famous marks.
In accordance with paragraph 4(i) of the Policy, for these reasons, the Complainant requests the Panel to transfer the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires the complainant to prove that the respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. The complainant must prove each of these three elements.
The Complainant has rights in the COMERICA marks. Under the UDRP, the test for identity or confusing similarity typically involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be identical or confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the identity of confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety in a domain name may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other generic terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark (Aktiebolaget Electrolux v. Ngoc Tien Nguyen, WIPO Case No. D2012-2318; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi, WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty / 21562719 Ont Ltd, WIPO Case No. D2012-1129 and references therein).
In this case, the disputed domain name incorporates the Complainant’s mark COMERICA in its entirety and is clearly its dominant element. The addition of the gTLD “com” in the disputed domain name does not alleviate any confusion.
Given the distinctive nature of the COMERICA mark which is readily recognisable within the disputed domain name, the Panel is satisfied that the disputed domain name <comerica-com.com> is identical to the Complainant’s trademarks and thus this element of paragraph 4(a) of the Policy has been established.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. Once a complainant establishes a prima facie case showing that none of the three circumstances establishing rights or legitimate interests apply, the burden of production on this element shifts to the Respondent. The burden of proof, however, remains with the Complainant to prove each of the three elements of paragraph 4(a) of the Policy (Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Aktiebolaget Electrolux v. Ngoc Tien Nguyen, WIPO Case No. D2012-2318; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi, WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty / 21562719 Ont Ltd, WIPO Case No. D2012-1129 and references therein).
The Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the case file provided by the Center to this Panel gives reason to believe that the Respondent has any rights or legitimate interests in respect of the disputed domain name, given the Respondent uses the disputed domain name in association with a parking page with sponsored links utilizing the Complainant’s mark but has no known rights in the mark.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another” (Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi, WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty/ 21562719 Ont Ltd, WIPO Case No. D2012-1129 and references therein).
In this case, the disputed domain name differs from the Complainant’s mark by the sole addition of “-com” and the Complainant has thus and otherwise proved that the Respondent has intentionally registered the disputed domain name, which is confusingly similar to the Complainant’s trademarks, and has intentionally diverted Internet users to a website offering sponsored links promoting, inter alia, the same or similar services as those offered by the Complainant. Such registration and use can only be motivated by commercial gain. The Panel fails to see what other legitimate motivation the Respondent’s conduct can have.
The Panel therefore considers that the Respondent’s conduct in this case constitutes evident bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Complainant has satisfied all three elements of paragraph 4(a) of the Policy.
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 <comerica-com.com> be transferred to the Complainant.
Michel N. Bertschy
Sole Panelist
Date: December 17, 2013