The Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
The Respondent is Chen Ki of Singapore.
The disputed domain name <comericacares.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2017. On April 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2017, the Registrar transmitted by email to the Center its verification response and on May 3, 2017, the Registrar confirmed that the Respondent is listed as the registrant and provided 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 May 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2017.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on July 3, 2017. 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 and offers banking services in many other States of the United States of America as well as in Canada and Mexico. The Complainant owns many United States registrations over the marksand COMERICA & device, including United States Trademark Registration No. 1,251,846 for COMERICA, registered for banking services in Class 36 on September 20, 1983, and United States Trademark Registration No. 1,776,041 for COMERICA & device, registered for banking services in Class 36 on June 8, 1993.
The Respondent registered the disputed domain name <comericacares.com> on March 2, 2017. The disputed domain name resolves to a parking page.
The Complainant contends that the disputed domain name <comericacares.com> is confusingly similar to its registered marks COMERICA.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name <comericacares.com>.
The Complainant contends that the disputed domain name <comericacares.com> was registered and is being used in bad faith.
The Complainant requests that the disputed domain name <comericacares.com> be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark or service mark right and the identity or confusing similarity between the disputed domain name and the respective trademark or service mark.
The Panel examines the registration certificates submitted by the Complainant and finds that, long before the registration of the disputed domain name <comericacares.com> on March 2, 2017, the Complainant had registered the service marks COMERICA and COMERICA & device in the United States of America.
The Complainant contends that the disputed domain name <comericacares.com> consists of the terms “comerica” and “cares” before the generic Top-Level Domain (“gTLD”) “.com”. Compared with the Complainant’s registered COMERICA marks, the disputed domain name <comericacares.com> is confusingly similar, because “comerica” is the most distinctive component in the disputed domain name and the addition of the word “cares” does not diminish the overall confusing similarity between the disputed domain name and the Complainant’s registered marks. Accordingly, the Complainant has proven the element required by paragraph 4(a)(i) of the Policy.
The Complainant asserts, and provides evidence to demonstrate, that the Respondent is not a licensee of the Complainant, has not been commonly known by the disputed domain name and does not make a bona fide offering of goods or services nor a legitimate, noncommercial or fair use of the disputed domain name, and therefore has no rights or legitimate interests in the disputed domain name <comericacares.com>. The Respondent does not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name <comericacares.com>. The Panel, although it visited the website “www.comericacares.com” to which the disputed domain name resolves, did not discover any information that may show the Respondent’s rights or legitimate interests in the disputed domain name.
Since there is no evidence before the Panel that the Respondent has any rights or legitimate interests in the disputed domain name <comericacares.com>, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent registered and is using the disputed domain name <comericacares.com> in bad faith. The Respondent made no submission to refute the Complainant’s contention.
The Panel finds that the Complainant had registered and used the service marksCOMERICA and COMERICA & device for banking services long before the Respondent’s registration of the disputed domain name. According to the evidence submitted the Complainant, the Complainant applied for registration of the mark COMERICA CARES with United States Patent and Trademark Office (USPTO) on February 22, 2017, and the application record has been published by the USPTO. The Panel finds, eight days after the Complainant filed for the respective service mark application, the Respondent chose to register the disputed domain name that is identical to the Complainant’s mark filed for registration, apart from the gTLD “.com”. Given the Complainant’s long-time registration and use of the marks COMERICA and the recent application for the mark COMERICA CARES, the Panel finds that it is reasonable to presume that the Respondent had registered the disputed domain name with the knowledge of the Complainant’s marks.
The Panel notes that the disputed domain name <comericacares.com> resolves to a parking page and the Respondent had asked the Complainant to pay USD 1,500 or USD 700 as the condition for transferring the disputed domain name back to the Complainant in its reply to the Complainant’s cease-and-desist letter.
The Panel therefore finds that the Respondent knowingly registered the disputed domain name that is confusingly similar with the Complainant’s COMERICA marks and offers to sell the disputed domain name at the price of USD 1,500 or USD 700 to the Complainant. The circumstances suggest that the Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant who is the owner of the service mark for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name, which is the evidence of the Respondent’s registration and use of the disputed domain name in bad faith under paragraph 4(b)(i) of the Policy. The Panel, therefore, finds that the Complainant has successfully proven the element required by paragraph 4(a)(iii) 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 <comericacares.com> be transferred to the Complainant.
Dr. Hong Xue
Sole Panelist
Date: July 14, 2017