The Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
The Respondent is Isaac Goldstein of Hong Kong, China.
The disputed domain name <cmerica.com> is registered with DomainHood LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2015. On November 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 05, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2015.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 18, 2015. 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 United States-based financial services company, headquartered in Dallas, Texas, with operations extending into Canada and Mexico.
It owns numerous United States trademark registrations for COMERICA or a stylized version of same (the "Mark"), including Registration No. 1,251,846, issued more than 30 years prior to the registration of the disputed domain name.
The Complainant is also the registrant of, among others, the domain names <comerica.com>, <comerica.net> and <comerica.org>.
The Respondent registered the disputed domain name <cmerica.com> on October 18, 2015 and since then, it has used the disputed domain name to establish a web page that contains various links to other commercial websites, including pay-per-click links.
The Complainant contends that:
- the Mark is coined, distinctive and powerful and symbolizes the good will of the Complainant;
- the Complainant invests millions of dollars every year in the promotion of products and services identified with the Mark;
- the disputed domain name is identical or confusingly similar to the Mark because it is identical to the mark except that it omits the letter "o", which constitutes a common typographical error made by Internet users attempting to access the website of the Complainant;
- the disputed domain name redirects Internet visitors to rotating websites, one of which is "www.ww25.cmerica.com" which provides for pay-per-click links that refer to banking services;
- there is no indication that the Respondent has rights or legitimate interests in the disputed domain name;
- the disputed domain name was registered and used in bad faith by the Respondent, who must have known of the Complainant's rights in the Mark, at the time of registration, who is using the disputed domain name to resolve to sites with pay-per-clicks links that refer to banking, or as a device to spread a virus and who is also known for a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties.
The Respondent did not reply to the Complainant's contentions.
To succeed, the Complainant must demonstrate that all of the elements listed 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 Panel agrees that the Complainant has extensively established that it has prior trademark rights in the Mark, which is coined, distinctive, powerful and widely known as recognized in Comerica Bank v. Rodica Ilea, WIPO Case No. D2013-1861 and in Comerica Bank v. Host Master, Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2014-0735.
The Complainant asserts under this point, that the disputed domain name is identical or confusingly similar to the Mark because it is identical to the Mark except that it omits the letter "o", which constitutes a common typographical error made by Internet users attempting to access the website of the Complainant. The Panel shares the consensus opinion stated in paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), that the reproduction of a trademark with the omission of one letter could constitute a case of typo squatting under the Policy, when such omission represents an obvious and common misspelling of a trademark ("A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name"). In this sense, the Panel finds that the registration of the disputed domain name represents typosquating as stated above. See Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971, Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073 and Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043.
The Complainant further asserts that additional confusion results from redirection of Internet visitors by the disputed domain name to rotating websites, one of which is "www.ww25.cmerica.com" which provides for pay-per-click links that refer to banking services. The Panel finds that this is not a matter to be considered under paragraph 4(a) of the Policy.
For all the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Mark and that the Complainant has established the first element of paragraph 4(a) of the Policy.
Under this element of the Policy, the Complainant has to make at least a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, as indicated in the WIPO Overview 2.0, paragraph 2.1 (after complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel is persuaded by the Complainant's assertions that (a) the Complainant has never licensed the Respondent to use the Mark or the disputed domain name, (b) the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services, (c) the Respondent is neither known nor licensed to be known by the disputed domain name, and (d) the Respondent is making no legitimate noncommercial or fair use of the disputed domain name.
The Respondent failed to rebut the assertions of the Complainant under this element by failing to respond to the Complaint. Moreover, no other facts in the record could be considered in the Respondent's favor.
Accordingly, the Complainant has demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and therefore, the second element of paragraph 4(a) of the Policy is established.
The Complainant asserts several circumstances which, in the opinion of the Panel, evidence the bad faith of the Respondent in registering and using the disputed domain name.
The Panel agrees, as established in prior UDRP decisions, that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
As stated above, the Panel considers the Mark to be well known and, thus, as such it is definitely unlikely that the Respondent chose to register the disputed domain name with no knowledge of the Mark.
Where the Respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also demonstrate bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel agrees with the Complainant that the circumstance of the offer to sell the disputed domain name made by one Lavenia Eldredge, followed by immediate registration of the disputed domain name by the Respondent could be charged on the Respondent as an evidence of bad faith.
Moreover, the redirection of Internet visitors to rotating websites, one of which is "www.ww25.cmerica.com" which provides for pay-per-click links that refer to banking services is further evidence of bad faith registration and use.
Last, but not least, the fact that the Respondent is also known for a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties as asserted by the Complainant and in the UDRP practice – see The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy - Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069, is one of the circumstances which further indicates the bad faith registration and use of the disputed domain name.
Although other circumstances have been indicated by the Complainant, the Panel finds the above sufficient under the third element of paragraph 4(a) of the Policy, to conclude that the Complainant has also established this third element.
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, <cmerica.com>, be transferred to the Complainant.
Beatrice Onica Jarka
Sole Panelist
Date: December 28, 2015