WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comerica Bank v. Dough Thompson

Case No. D2014-1060

1. The Parties

The Complainant is Comerica Bank of Dallas, Texas, United States of America (the “Complainant”), represented by Bodman PLC.

The Respondent is Dough Thompson of Macon, Georgia, United States of America (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <ticketscomericatheatre.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2014. On June 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 20, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing his 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2014. In accordance with paragraph 5(a) of the Rules, the due date for the Respondent’s response was July 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on July 18, 2014.

The Center appointed D. Brian King as the sole panelist in this matter on August 4, 2014. The Panel finds that it was properly constituted. The sole panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

4. Factual Background

A. The parties

The Complainant is a financial services company with bank locations in Arizona, California, Florida and Michigan, in addition to “select businesses operating in several other states of the United States of America, as well as in Canada and Mexico” (Complaint, paragraph 12.A). As of December 31, 2013, the Complainant had total assets of USD 65.4 billion and was among the forty largest American holding companies (see Annex 4 to the Complaint). Based on the contents of the webpage underlying the Domain Name, the Respondent appears to be involved in the ticket brokerage business for entertainment events. The Panel has no other information about the Respondent’s business or history.

B. The marks

The Complainant is the registered owner of the following marks involving the word “comerica” (together, the “Registered Marks”):

- a service mark for COMERICA, registered in 1982 for use in banking services;

- a service mark and accompanying design embodying COMERICA, registered in 1992 for use in banking services; and

- thirty-five additional registered or pending marks comprising, in whole or in part, COMERICA.

The Complainant also claims to have rights in the unregistered mark, COMERICA THEATRE (the “Unregistered Mark”), arising out of its naming rights to a concert hall in Phoenix, Arizona known as Comerica Theatre (the Unregistered Mark and the Registered Marks are referred to together as the “Marks”). The Panel revisits this claim below in Section 6.A.

The Complainant is the registrant of numerous domain names embodying its Registered Marks, including <comerica.com>, <comerica.net>, and <comerica.org>. It is also the registrant of the domain name <comericatheatre.com> (Complaint, paragraph 12.A; Annexes 7, and 8 to the Complaint). The underlying webpage for the latter domain name displays venue information, a calendar of events, and links to buy tickets for events at Comerica Theatre (Annex 8 to the Complaint).

C. The Domain Name

The Domain Name was registered by the Respondent on December 11, 2013. A June 19, 2014 screen shot of the webpage underlying the Domain Name displays the name “Tickets Comerica Theatre” and has a picture of the theater, a calendar of events, a brief history of the theater, and links to buy tickets for events at the theater (See Annex 12 to the Complaint). In the bottom right hand corner of the webpage is the following text: “This website is operated by a ticket broker” (the “Disclaimer”). The “About Us” section states that the website is “reserved to Comerica Theatre arena. Here is where to find tickets for all main events scheduled to appear [sic] Comerica Theatre” (Annex 13 to the Complaint).

On March 18, 2014, the Complainant wrote to the Respondent asking for the immediate transfer of ownership of the Domain Name (Annex 14 to the Complaint). As of June 19, 2014, the date the Complaint was filed in the present action, the Complainant had not received a response from the Respondent (Complaint, paragraph 12.C).

5. Parties’ Contentions

A. Complainant

The Complainant claims that the Domain Name is identical or confusingly similar to its Marks. It submits that the word “comerica”, on which its Registered Marks are based, has widespread commercial recognition, and that the Unregistered Mark is a distinctive identifier for the Comerica Theatre concert hall. The Complainant contends that the addition of the word “tickets” in the Domain Name does not distinguish it from the Complainant’s Marks because “tickets” is a non-distinctive word, typically used in connection with concert halls.

The Complainant also claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. It asserts that it has not licensed its Marks to the Respondent. The Complainant further submits that there is no evidence of the Respondent using or preparing to use the Domain Name in connection with a bona fide offering of goods or services. Instead, the Complainant says that the Domain Name is being used misleadingly to divert consumers, who would be confused by the use of the Complainant’s Marks on the website underlying the Domain Name. In these circumstances, the Complainant contends that the Respondent does not own and cannot lawfully obtain trademark or intellectual property rights to the Registered or Unregistered Marks.

The Complainant claims that the Domain Name was registered and is being used in bad faith. It states that registration of a domain name containing the well-known mark COMERICA by itself shows bad faith, as the Respondent must have known of the Complainant’s rights in its Marks at the time of registration. The Complainant submits that the Domain Name is being used in bad faith, because the underlying webpage creates a likelihood of confusion as to its connection with the Complainant and its Marks. It further contends that the inclusion of the Disclaimer does not negate a finding of bad faith because (i) it does not make clear that the Domain Name is unaffiliated with the Complainant, and (ii) financial gain through misuse of the Domain Name may be realized before Internet users read the Disclaimer. Lastly, the Complainant argues that the Respondent’s failure to respond to a letter sent by the Complainant after the Domain Name’s registration further evidences bad faith on the part of the Respondent.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) above. Paragraph 4(c) of the Policy sets out three illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant has provided evidence demonstrating that it has rights in multiple Registered Marks using the word “comerica” (See Annexes 9, 10, and 11 to the Complaint). The Domain Name uses the same word (“comerica”) together with two descriptive words—“tickets” and “theatre”. Panels have consistently held that the addition of generic or descriptive words to a complainant’s trademark does not adequately distinguish a domain name from the registered mark (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; eBay Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307; Lime Wire LLC v. David Da Silva v. Conactprivacy.com, WIPO Case No. D2007-1168).

Given that the Domain Name uses the distinctive word “comerica”, on which the Complainant’s Registered Marks are based, the Domain Name is likely to cause Internet users to assume that it is associated with or owned and operated by the Complainant. That the Complainant has naming rights to a concert venue called “Comerica Theatre” – a contention that is consistent with the evidence and the Respondent’s own actions – underscores the confusion that would be caused and the likely association that an internet user would make between the Domain Name, the Registered Marks, and the Complainant.

On these grounds, the Panel concludes that the Domain Name is confusingly similar to the Registered Marks, in which the Complainant plainly has rights. Given this finding, it is unnecessary to decide whether (i) the Complainant genuinely has common law rights to the Unregistered Mark (i.e., “Comerica Theatre”), and (ii) the Domain Name is confusingly similar to the Unregistered Mark.

On these grounds, the Panel finds that the first element of the test under paragraph 4(a) of the Policy is met.

B. Rights or Legitimate Interests

Many panels constituted under the Policy and the Rules have found that complainants only need to establish a prima facie case in relation to the second element of the test under paragraph 4 of the Policy (See, e.g., Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P., v. Media Insight a/k/a/ Media Insights, WIPO Case No. D2010-0211; Ladbroke Group Plc v. Sonoma International LDC; WIPO Case No. D2002-0131). Once a prima facie showing is made, the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the Domain Name. The present Panel agrees that the Complainant need only make out a prima facie case.

The Respondent here has not filed a response, and the Complainant’s claims and contentions therefore remain unchallenged. In the absence of any contrary evidence, the Panel accepts the Complainant’s representations that it has not given the Respondent authorization to use its Registered Marks.

As a result of the Respondent’s failure to participate, no evidence has been presented that might be capable of establishing rights or legitimate interests in the Domain Name on his part. The Panel can therefore only draw inferences and conclusions from the record before it. As stated above, paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name. There are three such circumstances:

i. The respondent used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

ii. The respondent has been commonly known by the domain name.

iii. The respondent is 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 mark at issue.

The second and third circumstances can be disposed of easily. There is no evidence that the Respondent has been commonly known by the Domain Name; indeed, given the Domain Name’s inclusion of the Complainant’s Registered Mark COMERICA, it is inherently unlikely that this could be so. The webpage to which the Domain Name resolves is commercial in character, thus eliminating the possibility of legitimate noncommercial use by the Respondent.

Whether the Respondent is covered by the first category is less clear and requires a more detailed analysis. The first of the categories listed above protects respondents who use domain names for a bona fide offering of goods or services. There is a group of cases decided under the Policy that have considered the rights that a reseller or a distributor of trademarked goods might have in a domain name which contains such a trademark. Emerging from these cases is a test for determining whether a respondent is making a bona fide offering of goods or services. In order to constitute a bona fide offering, the test requires a showing that: (a) the respondent is actually offering the goods or services at issue, (b) the webpage underlying the Domain Name is being used to sell only the trademarked goods and not to bait users to switch to other goods, (c) the respondent has accurately disclosed its relationship with the trademark owner, and (d) the respondent has not attempted to “corner the market” in all relevant domain names (see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Research in Motion Limited v. One Start Global LLC, WIPO Case No. D2009-0227). The Panel finds the test to be useful guidance for present purposes.

Here, the Respondent failed accurately to disclose its relationship with the Complainant (or rather the absence thereof) on its website. Instead, in the following ways, the Respondent created a likelihood of confusion that the webpage and the Domain Name belonged to or were affiliated with the Complainant:

- using the Complainant’s Registered Marks on the webpage underlying the Domain Name;

- posting links on the webpage to the Complainant’s various social media platforms;

- posting a photograph of Comerica Theatre on the webpage, in which the Complainant’s Marks are prominently featured;

- including on the webpage a statement regarding the Complainant’s purchase of the theater’s naming rights; and

- including on the portion of the website called “About Us” the following phrase: “Welcome to this website which is reserved to Comerica Theatre arena.”

The webpage underlying the Domain Name does have a disclaimer and, in certain circumstances, depending on its wording, a disclaimer may be sufficient to dispel any likelihood of confusion. The Disclaimer on the Respondent’s webpage is, however, insufficient. It appears only at the very bottom of the webpage. It is inherently ambiguous in its content, stating that the website is “operated” by a ticket broker, but failing to disclaim any relationship to the Complainant. That ambiguity is magnified by the statement in the “About Us” section that the website is “reserved to Comerica Theatre arena,” an entity closely associated with the Complainant. For these reasons, the Panel finds that the Domain Name is not being used in connection with a bona fide offering of goods and services.

On the basis of the findings above, the Panel concludes that the Complainant has successfully made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name. The Respondent has presented no evidence to the contrary. Accordingly, the Panel finds that the Complainant has satisfied the requirements of the second element of the test under paragraph 4 of the Policy.

C. Registered and Used in Bad Faith

There is no question that the Respondent knew of the Complainant’s Marks when it registered the Domain Name in 2013 - the webpage underlying the Domain Name references the purchase of naming rights by the Complainant, which took place prior to the registration of the Domain Name (See Annex 12 to the Complaint). Moreover, the Complainant’s Registered Marks appear in several places on the webpage. Actual knowledge of the existence of trademarks of another, while registering a domain name that is confusingly similar to those trademarks (and in the absence of any rights or legitimate interests on the registrant’s part), is a clear display of bad faith. Therefore, the Panel has no hesitation in finding that registration was made by the Respondent in bad faith.

Paragraph 4(b)(iv) of the Policy provides that the following, in particular, will be evidence of use of a domain name in bad faith:

By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.

The above illustration requires the Panel to consider the following questions:

- Has the Respondent intentionally attempted to attract users to its website?

- Is the purpose of the website the Respondent’s commercial gain?

- Has the Respondent created a likelihood of confusion with the Complainant’s Registered Marks?

In the present case, the first two elements are easily met. The Panel is able to conclude from its function as a ticket sales service that the Respondent’s webpage was designed to attract Internet users for the purpose of commercial gain. The only way for the Respondent to sell tickets was to have users visit its webpage at the Domain Name. The Panel can easily infer that the Respondent has intentionally attempted to attract users to its Domain Name.

With respect to the third element, the Panel finds that the webpage underlying the Domain Name displays multiple attributes that would increase the likelihood of confusion by an Internet user and thereby allow the Respondent wrongfully to capitalize on the Complainant’s Marks. These attributes have been described above in Section 6.B. As also explained above, the Disclaimer does not adequately clarify that the Respondent has no affiliation with the Complainant, and therefore does not dispel the likelihood of confusion. The Respondent did not avail itself of the opportunity to explain its conduct, or to explain the contents of its webpage; the Panel infers that the Respondent had nothing useful to say in that regard. Accordingly, the Panel concludes that the Respondent is using the Domain Name in bad faith by attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s Registered Marks.

On these grounds, the Panel finds that the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

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 Domain Name <ticketscomericatheatre.com> be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: August 18, 2014