WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Domains By Proxy Inc. / Web Services Pty
Case No. D2011-0703
1. The Parties
The Complainant is Comerica Incorporated of Detroit, Michigan, United States of America represented internally.
The Respondents are Domains By Proxy Inc. and Web Services Pty of Scottsdale, Arizona, United States of America and New Delhi, India, respectively.
2. The Domain Name and Registrar
The disputed domain name <comericawebbbanking.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2011. On April 26, 2011, the Center transmitted by email to GoDaddy.com, Inc a request for registrar verification in connection with the disputed domain name. On April 28, 2011, GoDaddy.com, Inc. 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 April 28, 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 April 29, 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 May 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2011.
The Center appointed Simon Minahan as the sole panelist in this matter on June 10, 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.
4. Factual Background
From the Complaint and associated materials, and in the absence of any contradiction by way of Response, the Panel finds the following matters established as fact:
is a financial services company headquartered in Dallas, Texas, in the United States of America;
has traded as a financial and banking services provider by reference to the trade mark COMERICA in the United States of America and elsewhere since 1982;
is the holder of the service mark COMERICA registered with the U.S. Patent and Trade Mark Office, Reg. No. 1,251,846 and Reg. No. 1,776, 041 for “banking services” and owns numerous other registered marks;
is the registrant of the domain names <comerica.com>, <comerica.net> and <comerica.org>;
the name and mark COMERICA is a “fanciful” mark, being a “coined” term;
has not licensed or authorized the Respondent to use or trade by reference to the COMERCIA marks.
has no registered trade marks corresponding to the disputed domain name or any part of it;
is not commonly known by the name “Comerica” or any variant thereof;
does not own and does not presently have any legitimate rights or claims to the COMERICA mark or “Comericaawebbbanking” as a trade mark;
has not made use of the disputed domain name in connection with any bona fide offering of goods or services;
has made use of the disputed domain name to divert traffic to its own commercial website.
5. Parties’ Contentions
The Complainant contends that the COMERICA trade mark is a famous mark by dint of it widespread reputation and recognition in the United States of America.
The Complainant further contends that the disputed domain name, being comprised of the term “Comerica” and the descriptive words “web” and “banking”, which refer to one of the industry channels in which the trade mark is applied, is confusingly similar to its COMERICA trade mark.
It further contends that the Respondent has no right or legitimate interests in the disputed domain name and has, by its conduct in registering the disputed domain name which incorporates the coined term, “Comerica”, registered it in bad faith (citing Myer Stores Ltd v David John Singh, WIPO Case No. D2001-0763 and Cellular Group One v Paul Brien, WIPO Case No. D2000-0028) and used the disputed domain name in bad faith by using it to divert traffic to its own website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding that the Respondent has not replied to the claims of the Complainant, the Complainant nonetheless has the onus of making out the grounds for transfer or cancellation under the Uniform Dispute Resolution Policy (“the Policy”).
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfied the requirements under paragraph 4(i)(a) of the Policy and has the rights in the COMERCIA mark, as discussed above, in Section 4.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s various COMERICA trade marks.
In this regard the Panel considers that the introduction of the descriptive and generic terms “web” and “banking” in connection with the Complainant’s mark do not serve to distinguish the disputed domain name from the Comercia mark and refers to the reasoning in numerousprior cases to this effect, e.g.:
Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Pepsico Inc v. Pepsi SRL and EMS Computer Industry, WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home care and DHC services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v Inja, Kil, WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184.
Accordingly, the Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant, in the absence of any contradictory evidence, has prima facie established that the Respondent has no right or legitimate interest in the disputed domain name, having established that the Respondent has no history of use of the “Comerica” name or any part of it, nor any registered trade marks bearing any resemblance to this name, and its use of it not being otherwise a legitimate commercial or noncommercial use.
The Panel is of the view that under Policy paragraph4(a)(ii) once the Complainant has made out a prima facie case, as it has here, the burden to establish those rights shifts to the Respondent to rebut the presumption (see e.g.: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317).
The Respondent, not having responded to the Complaint, has not discharged the burden.
Accordingly the Panel finds the second element of the Policy satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) (iv) of the Policy lists as one of the circumstances evidencing bad faith “by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website”. On the uncontradicted evidence of the Complainant, the Respondent has made such use of the disputed domain name and accordingly the Panel finds it has made bad faith use of the disputed domain name.
Further, the Panel accepts the Complainant’s contention that the incorporation of its coined or fanciful COMERICA trade mark in the disputed domain name is prima facie evidence of bad faith registration since it is virtually inconceivable that, in combination with the terms “web” and “banking”, that any legitimate commercial or noncommercial use could ever have been made of the such a disputed domain name, which did not infringe upon nor seek to misappropriate the Complainant’s trade mark.
Accordingly the Panel finds the third element of the Policy is satisfied.
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, <comericawebbbanking.com> be transferred to the Complainant.
Dated: June 13, 2011