WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. CFR INTL
Case No. D2011-0704
1. The Parties
Complainant is Comerica Incorporated of Dallas, Texas, United States of America, represented by internal counsel.
Respondent is CFR INTL of Alta Loma, California, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <comericaoffer.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 22, 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 26, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2011. The Response was filed with the Center on May 19, 2011.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 1, 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
Complainant is the owner of registrations of the trademark and service mark COMERICA on the Principal Register of the United States Patent and Trademark Office (USPTO), inter alia, registration number 1,251,846, dated September 20, 1983, in international class (IC) 36, covering "banking services", and; registration number 1,776,041 (word and design), dated June 8, 1993, in IC 36, covering "banking services".1
Complainant is among the 25 largest United States (“US”) banking enterprises with USD 53.7 billion in assets at the end of 2010. Complainant principally operates in Texas, Arizona, California, Florida and Michigan, as well as in Canada and Mexico. Complainant states that it has used its COMERICA trademark in commerce since 1982, and invests millions of dollars each year in promoting its goods and services identified by the COMERICA trademark. Complainant operates a commercial Internet website, inter alia, at the domain name <comerica.com>.
According to the GoDaddy.com, Inc. verification report, Respondent is registrant of the disputed domain name. According to that verification report, the record of registration of the disputed domain name was created on March 29, 2008, and the disputed domain name was registered to Respondent on that date.
Respondent has used the disputed domain name to redirect Internet users to a webpage at the domain name <mybankoffer.com> that states:
“Business & finance tycoon M. Ali J. Rizvi, brings to you the hottest spot on the web.
For more information please contact: Rizvi@cfrintl.com”2
Respondent’s principal, Mohammad Alijan Rizvi, has provided evidence that he is licensed by the State of California Department of Real Estate, as a Broker, doing business as Respondent (CFR International). Complainant has also provided evidence of his registration as a loan broker with the Nationwide Mortgage Licensing System and Registry.
The registration agreement in effect between Respondent and GoDaddy.com, Inc., subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark and service mark COMERICA as evidenced by registration on the Principal Register of the USPTO, and that the COMERICA trademark and service mark have been used extensively in commerce in the United States. Complainant asserts that the COMERICA trademark and service mark is comprised of a coined term, and is well known.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant argues that Respondent: (1) has not used the disputed domain name in connection with a bona fide offering of goods or services; (2) owns no trademark or service mark registrations for the disputed domain name or any portion thereof, and has not been commonly known by the disputed domain name or any portion thereof; (3) has not been authorized by Complainant to use its mark in the disputed domain name, and; (4) cannot lawfully obtain any intellectual property rights in Complainant's trademark and service mark.
Complainant argues that Respondent registered and has used the disputed domain name in bad faith because: (1) mere registration by Respondent of Complainant's distinctive trademark is sufficient to establish bad faith because Respondent cannot make a legitimate use of that trademark without infringing Complainant's rights; (2) Respondent's use of the disputed domain name to link to Complainant's website and third-party websites indicates that Respondent is deceptively using Complainant's mark for commercial gain to attract Internet users.
Complainant requests the Panel to direct GoDaddy.com, Inc. to transfer the disputed domain name to Complainant.
Respondent does not challenge Complainant's assertion of rights in the COMERICA trademark.
Respondent argues that it intends to use the disputed domain name for fair use purposes. Respondent indicates that he has not used the disputed domain name commercially because he has never developed a website. Respondent states that he is a real estate broker working as a mortgage broker, whose job consists of finding banks or direct lenders for individual clients. Respondent intends to use the disputed domain name "to show what Comerica, Complainant's company, is offering through using the domain name <comericaoffer.com>. There will be a notice provided that the developed domain name does not represent Comerica in any fashion."
Respondent asserts that in 2008 he was contacted by a representative of Complainant inquiring as to what he intended to do with his website. Respondent states that he intended to show public information regarding Comerica’s current bank offerings, and that Respondent might work with Comerica to offer exclusive bank offers to different types of online users. Respondent states that the representative said that they would be happy to work with him on the site, but failed to follow up.
Respondent rejects the assertion that he registered the disputed domain name in bad faith because his acts do not fit within the factors listed in paragraph 4(b) of the Policy. Respondent states that there is no indication that he intentionally attempted to confuse anyone for commercial gain or to misdirect Internet users. Respondent indicates that Complainant's allegations do not pertain to the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings, and Respondent filed a Response. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has submitted sufficient evidence to establish that it is the owner of rights in the trademark and service mark (hereinafter “trademark”) COMERICA in the United States of America, and Respondent has acknowledged Complainant’s rights in that trademark. The Panel determines that Complainant owns rights in the trademark COMERICA.
The disputed domain name directly incorporates Complainant’s trademark and adds the term “offer”.3 The term “offer”, referring to the holding out of an opportunity, is commonly used in connection with lending and other banking services, and Internet users would expect that term to be used by Complainant in connection with its trademark. The Panel determines that the disputed domain name <comericaoffer.com> is confusingly similar to Complainant’s COMERICA trademark for purposes of the Policy.
The Panel determines that Complainant has rights in a trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c))
Complainant has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain name because Respondent: (1) has not made a bona fide offering of goods or services under the disputed domain name prior to notice of the dispute; (2) has not been authorized to use Complainant's mark in the disputed domain name; (3) has not been commonly known by the disputed domain name; (4) does not have rights in the trademark used in the disputed domain name; and (5) has not made legitimate noncommercial or fair use of the disputed domain names. The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has argued that it has rights or legitimate interests in the disputed domain name because it intends to use the disputed domain name in connection with providing information concerning loan offerings by Complainant. Respondent registered the disputed domain name more than three years ago, and to date the sole acknowledged use of the disputed domain name on Respondent’s website has been to state: “Business & finance tycoon M. Ali J. Rizvi, brings to you the hottest spot on the web. For more information please contact: Rizvi@cfrintl.com". Whatever might be Respondent’s purpose in making the referenced statement, there is nothing to suggest a connection with loan offerings by Complainant.
Paragraph 4(c)(iii) of the Policy states "you are making a legitimate noncommercial or fair use of the domain name". This expressly refers to a current demonstrated use of a disputed domain name for purposes of establishing rights or legitimate interests. As a general matter, mere statements of future intent are not sufficient to establish rights or legitimate interests. There must at least be evidence of concrete preparations to use the disputed domain name, some prior practice or conduct from which a solid inference of intent to use in a particular way could be drawn, or some other factor that justifies non-use (such as awaiting the outcome of litigation). Compare Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000 with Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399. Factors that might justify three years of non-use by Respondent in the manner it now proposes are not present here.
Respondent’s past and present use of Complainant's distinctive trademark to direct Internet users to a “business and finance tycoon with the hottest spot” on the Internet does not establish rights or legitimate interests in the disputed domain name. The Panel need not address whether the form of future use it has proposed would establish fair use rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include:
"(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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; (iv) 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Complainant has alleged that registration by Respondent of its coined term trademark, without more, is sufficient to establish registration in bad faith because, in effect, there is no good faith purpose that Respondent might have had in registering the disputed domain name. The Panel does not agree that registration of a coined term standing alone establishes bad faith. Other factors must be taken into account to establish the relevant context, and Complainant has not provided additional arguments regarding the context here. (As noted below, Complainant's additional arguments are not directed to Respondent’s actual conduct). Trademarks are subject to a variety of potential legitimate noncommercial and fair uses, and equating registration standing alone with bad faith would deprive third parties of potential fair use justifications.
Respondent is correct in pointing out that Complainant’s second allegation that Respondent has used the disputed domain name in connection with some form of pay-per-click website is not relevant to this proceeding. It appears that Complainant has used a "standard form" of pleading in this dispute, with limited regard to the actual conduct of Respondent. However, Complainant has referred to the factual situation in which Respondent has used the disputed domain name to direct Internet users to its personal business and financial tycoon-ness, and the "hottest spot on the web".
Respondent has used the disputed domain name that is confusingly similar to Complainant's distinctive trademark to identify its own third-party business and financial services. This appears to have been for commercial gain since there is limited plausible alternative reason for directing Internet users to his financial acumen (if not for commercial gain). The disputed domain name incorporating Complainant's trademark suggests sponsorship, affiliation or endorsement by Complainant. Moreover, by suggesting that the disputed domain name brings Internet users to "the hottest spot on the web", Respondent implies significant Internet user traffic at the website, which plausibly suggests the disputed domain name is a valuable asset offered for sale.
The Panel concludes under the totality of the circumstances that Respondent registered and has used the disputed domain name in bad faith because Complainant's distinctive trademark is used to direct Internet users to Respondent's website where Respondent’s business and financial services are promoted, and which website implicitly solicits an offer for purchase of the disputed domain name.
For all 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, <comericaoffer.com>, be transferred to the Complainant.
Frederick M. Abbott
Dated: June 13, 2011
1 Complainant provided USPTO registration numbers for the marks referenced above, but did not provide copies of certificates evidencing registration from USPTO TESS or TARR database printouts, or otherwise, as should be done to evidence trademark ownership. The Panel has confirmed registration through the USPTO database. Respondent in this proceeding has not challenged Complainant's ownership of the trademark registrations.
2 Confirmed by Panel visit of June 13, 2011.
3 Addition of the generic top-level domain identifier ".com" is not relevant to analysis of confusing similarity in this context.