WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Shu Lin
Case No. D2011-0709
1. The Parties
The Complainant is Comerica Incorporated of Dallas, Texas, United States of America.
The Respondent is Shu Lin of Dalian, China.
2. The Domain Names and Registrar
The disputed domain names <bankcoamerica.com> and <wwwcomericabank.com> are registered with Above.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 Above.com, Inc. a request for registrar verification in connection with the disputed domain names. On April 28, 2011, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names 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 Above.com, Inc., 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 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2011.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on May 30, 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is a financial services company headquartered in Dallas, Texas. It is one of the largest banks in the United States of America with assets of over USD 57 billion (as at end of 2010). The Complainant’s business includes operations in Arizona, California, Florida and Michigan and selected businesses in other American states, Mexico and Canada.
4.2 The Complainant has registered various trademarks and service marks in the United States of America including the trademark COMERICA for banking services.
4.3 The Complainant has been using the COMERICA trademark continuously and extensively since 1982. In addition, the Complainant has also registered, amongst others, the domain names <comerica.com>, <comerica.net> and <comerica.org>.
4.4 The trademark COMERICA is a coined and distinctive trademark.
5. Parties’ Contentions
5.1 The Complainant contends that the disputed domain names are confusingly similar to the COMERICA trademark to which it has right.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain names because:
(a) the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services.
(b) the Respondent does not own any trademarks or service marks comprising the disputed domain names or parts thereof.
(c) the Complainant is not commonly known by the disputed domain names or parts thereof.
5.3 In relation to the requirement of bad faith registration and use of the domain names, the Complainant contends as follows:
(a) the Respondent was aware of the existence of the Complainant’s trademark as the COMERICA is a well-known trademark.
(b) the registration of a distinctive coined term as part of the disputed domain names amounts to bad faith.
(c) the use by the Respondent of the disputed domain names to deceptively redirect Internet users to the Respondent’s website presumably for commercial gain amounts to bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate rights in respect of the domain names; and
(c) that the domain names have been registered and are being used in bad faith.
6.1. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the trademark COMERICA. The trademark is not only registered by the Complainant in several jurisdictions but it has also been used extensively by the Complainant for almost 30 years.
As such the Panel finds that the disputed domain names are confusingly similar to the Complainant’s COMERICA trademark for the purpose of the Policy.
6.2. Rights or Legitimate Interests
The Complainant’s assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain names. There was also no evidence to indicate that the Respondent was known by the name Comerica.
The Respondent has not provided the Complainant with any legitimate evidence of use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before or after notice of the dispute. It is a well-settled principle that satisfying this burden by the Complainant is unduly onerous since proving a negative circumstance is logically more difficult than establishing a positive. Accordingly, it is sufficient that prima facie evidence offered by the Complainant of a lack of legitimate interest shifts the burden of production to the Respondent, which the Respondent failed to do (see, for example, Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Sampo plc v. Tom Staver, WIPO Case No. D2006-1135, Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003).
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.3. Registration and Use in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant’s COMERICA trademark when it registered and started using the disputed domain names. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain names which were well after the date when the Complainant started using the COMERICA trademark and the “www.comerica.com” website, the widespread use of the COMERICA trademark by the Complainant and the fact that the Respondent was using the disputed domain names for commercial gain.
Based on the Respondent’s conduct, it appears that the Respondent intentionally attracted Internet users for commercial gain to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. The disputed domain names resolve to websites that contain links to other websites that presumably, when clicked, allow the Respondent to obtain commissions or payments. Such a conduct where a Respondent seeks or realizes commercial gains evidences bad faith as consistently set forth in previous UDRP decisions including, inter alia, Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc. WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383.
The Panel is satisfied that the Respondent must have had knowledge of the reputation and goodwill of the COMERICA trademark when the Respondent sought to register and use the disputed domain names. As such, the Panel finds that registration and use in bad faith has been demonstrated under paragraph 4(b)(iv) 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 domain names, <bankcoamerica.com> and <wwwcomericabank.com>, be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: June 13, 2011