WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Milan Kovac
Case No. D2011-0894
1. The Parties
The Complainant is Comerica Incorporated of Detroit, Michigan, United States of America, represented internally.
The Respondent is Milan Kovac of Bratislava, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <comericawebbankinglogin.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011 in English language. On May 25, 2011, the Center transmitted by email to Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com a request for registrar verification in connection with the disputed domain name. On May 26, 2011, Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com 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, stating that the language of the Registration Agreement is Slovak. The Center sent an email communication to the Complainant on May 27, 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 amendment to the Complaint on June 6, 2011. The Center verified that the Complaint together with the amendment to 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”).
On May 31, 2011, the Center transmitted an email communication to the parties in both English and Slovak regarding the language of the proceeding. On June 3, 2011, the Complainant requested English to be the language of the proceeding. The Respondent did not comment on the question of the language of the proceeding within the specified time limit.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint with the cover email in both English and Slovak, and the proceedings commenced on June 7, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a financial services company headquartered in Dallas, Texas, United States. It is among the 25 largest U.S. banking companies, with USD 53.7 billion in assets. Besides Texas, the Complainant is doing business in other states of the United States, including Arizona, California and Florida as well as in other countries, namely Canada and Mexico.
The Complainant is registered owner of numerous trademark and service mark registrations, inter alia Untied States trademark registration No. 3950474 COMERICA WEB BANKING filed on August 16, 2010 in international class 36, claiming first use in commerce of April 1, 2000 and United States trademark registration No. 1776041 COMERICA & design filed on February 7, 1992 in international class 36, claiming first use in commerce of June 18, 1992 (hereinafter referred to as the “COMERICA Marks”). Furthermore, the Complainant is owner of several Internet domain names including the term “comerica”, inter alia <comerica.com>, <comerica.net> and <comerica.org>.
The disputed domain name was registered on February 1, 2010 and is used in connection with a domain parking website.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant’s COMERICA Marks, which have been used in commerce continuously since 1982 and are widely recognized.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as he has no trademark or trade name incorporating or confusingly similar to the COMERICA Marks, as he has not used the disputed domain name in connection with a bona fide offering of goods or services, as he has not been commonly known by the disputed domain name or any portion thereof, and as he has not been licensed or otherwise permitted to use the COMERICA Marks. The Complainant argues that the Respondent uses the disputed domain name to disrupt the Complainant’s business, to deceive costumers and to trade off of the Complainant’s goodwill by creating an unauthorized association between him and the Complainant’s marks.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent ignored the fact that it was infringing the Complainant’s well-known trademark, which is in itself sufficient to support a claim of bad faith. The Complainant further argues that the Respondent cannot make a legitimate use of the Complainant’s COMERICA Marks without violation the Complainant’s rights and that the Respondent’s use of the disputed domain name in connection with a domain parking website is further evidence that the Respondent registered the disputed domain name to deceptively attract and then misdirect Internet users for his own commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The first point to be dealt with is the language of the present proceeding. The Registration Agreement, under which the disputed domain name was registered, is in Slovak. However, the Complaint was filed in English and the Complainant requested the Panel to accept the submission in English, contending that the website available at the disputed domain name is in English and that the Respondent is therefore familiar with the English language. It is consensus view that in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of the proceeding can be the language of the complaint, even if it is different to the language of the registration agreement (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition; L'Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585; Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In view of the Complainant's submissions and the circumstances of the case, the Panel decides that English is acceptable as language of the present administrative proceeding. Based on the fact that the Respondent registered a domain name composed of the Complainant’s mark COMERICA and three generic English words all related to the Complainant’s business, the Respondent is in all likelihood able to understand English. Moreover, he received the communications from the Center in Slovak as well and therefore had every opportunity to object.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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 disputed domain name fully incorporates the Complainant’s COMERICA Marks in which the Complainant has exclusive rights, and the disputed domain name is confusingly similar to such marks.
The fact that one of the Complainant’s COMERICA Marks includes additional graphical elements does not hinder a finding of confusing similarity under the Policy. It is well established that the similarity between a trademark and a disputed domain name is not eliminated by the fact that the trademark includes additional graphical elements (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932).
The additional words “web”, “banking” and “login” in the disputed domain name are merely generic and describe one of the Complainant’s services. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “web”, “banking” and “login” (cf. Pocket Kings Limited v. Miguel Ramirez / Whois Privacy Services Pty Ltd, WIPO Case No. D2011-0646 (<loginfulltiltpoker.com> et al.); The Royal Bank of Scotland Group plc v. Vietnam Domain Privacy Services, NAF Claim No. FA1378748 (<rbslogin.com>); Comerica Incorporated v. Domains By Proxy Inc. / Web Services Pty, WIPO Case No. D2011-0703 (<comericawebbbanking.com>); Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615 (<webbankingcomerica.com> et al.); Comerica Incorporated v. Wan-Fu China, Ltd., WIPO Case No. D2007-0590 (<comericanwebbanking.com> et al.)).
Finally, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panels that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the COMERICA Marks. The disputed domain name is composed of the Complainants mark COMERICA and three additional words describing one of the Complainant’s services. It is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the COMERICA Marks.
As to bad faith use, by fully incorporating the COMERICA Marks into the disputed domain name and by using the website at such domain name as a parking website providing links to third parties, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of 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 <comericawebbankinglogin.com> be transferred to the Complainant.
Dated: July 7, 2011