WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Thanart Chamnanyantarakij
Case No. D2011-0708
1. The Parties
The Complainant is Comerica Incorporated of Detroit, Michigan, United States of America, represented internally.
The Respondent is Thanart Chamnanyantarakij of Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <comericawebbanking.org> 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 27, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint did not meet the required file size and format modalities, the Complainant re-filed the Complaint on April 28, 2011.
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 the 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 Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2011.
The Center appointed Adam Samuel as the sole panelist in this matter on May 23, 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
The Complainant is a well-known United States banking and financial services company. It is the legal owner of United States trademark registrations for COMERICA, number 1251846 registered on September 20, 1983 and number 1776041 registered on June 8, 1993. The disputed domain name was registered on June 14, 2009.
5. Parties’ Contentions
This section sets out the Complainant’s contentions with which the Panel may or may not agree.
The COMERICA trademark is coined, distinctive, powerful and symbolizes the Complainant’s goodwill. The Complainant has used it continuously since 1982. The disputed domain name is confusingly similar to the Complainant’s mark. The Respondent has no legitimate interest in any domain name, trademark or trade name incorporating or confusingly similar to the Complainant’s trademark and has not used the disputed domain name in connection with a bona fide offering of goods or services. The Respondent owns no trademark registrations for and has not been commonly known by the disputed domain name or any portion of it. The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s mark or the disputed domain name. The Respondent’s use of the Complainant’s trademark to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant’s business, deceive consumers and trade off the Complainant’s goodwill by creating an unauthorized association between it and the Complainant’s mark. The Respondent’s use of the disputed domain name indicates an attempt to misappropriate the Complainant’s well-established famous mark.
When a domain name contains a distinctive coined term such as COMERICA, no other action, aside from registering the domain name is required for a finding of bad faith. The Respondent’s use of the disputed domain name to misdirect potential visitors to the Complainant’s websites to the Respondent’s website and to other third party commercial websites for which the Respondent presumably receives compensation is also evidence that the Respondent registered the domain name to attract deceptively and then misdirect Internet users for the Respondent’s own commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(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.
A. Identical or Confusingly Similar
The Complainant’s trademark COMERICA is both well-known and a coined term which has no independent meaning. The disputed domain name consists of this trademark, the expression “webbanking” and the standard suffix “.org”. “Webbanking” refers to Internet banking a service which the Complainant offers it’s banking customers through its domain name <comericawebbanking.com>. The addition of generic words particularly to well-known trademarks does generally not affect the confusing similarity between the disputed domain name and the Complainant’s trademarks. The panel, in Comerica Incorporated v. Wan-Fu China, Ltd., WIPO Case No. D2007-0590, reached the identical conclusion as regards <webankingcomerica.com>.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not called “Comerica” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its COMERICA trademark. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, on the basis of the available record, notably the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s trademark, COMERICA is a well-known name in the banking field with no independent meaning. The Complainant first registered the trademark twenty five years before the disputed domain name was registered. The disputed domain name directly refers to the Complainant’s business of online banking. In this Panel’s view, it is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the disputed domain name other than to attract business or Internet users to its site who were looking for a site connected to the Complainant’s trademark or business.
Currently, the disputed domain name is not being actively used except as parking site which provides links to the websites of various providers of banking and other financial services, primarily based in the United Kingdom.
The only reasonable explanation of what has happened is that the Respondent’s motive in registering and using the site seems to be simply to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith.
In the circumstances, it is unnecessary to deal with the Complainant’s other arguments in this case. The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <comericawebbanking.org> be transferred to the Complainant.
Dated: May 26, 2011