WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Dzone Inc., Taeho Kim / Whois Privacy Services Pty Ltd.
Case No. D2011-0895
1. The Parties
The Complainant is Comerica Incorporated of Dallas, Texas, United States of America, represented by an internal representative.
The Respondent is Dzone Inc., Taeho Kim of Gwangu, Republic of Korea / Whois Privacy Services Pty Ltd. of Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <wwwcomerica.net> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011. On May 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2011, the Registrar transmitted by email to the Center its verification 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 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”).
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 June 7, 2011. In accordance with the Rules, paragraph 5(a), 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 29, 2011.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on July 14, 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 Comerica Incorporated, a business incorporated in the State of Delaware. Its principal place of business is in Dallas, Texas, United States of America. It carries on its banking operations in various parts of the United States, and in Canada and Mexico. It is the owner of various United States registrations for its trademarks and service marks, in particular the service mark COMERICA. The Complainant is also the domain name registrant for a number of domain names, including <comerica.com>, <comerica.org> and <comerica.net>.
The disputed domain name <wwwcomerica.net> was registered on July 16, 2008.
5. Parties’ Contentions
The Complainant identifies itself as a financial services company that has its headquarters in Dallas, Texas, United States. It says that it is among the 25 largest United States banking companies with assets in excess of USD 53 billion. It is the owner of numerous United States registrations for its trademarks and service marks, which include the service mark COMERICA. The mark is “coined”. The Complainant invests millions of dollars every year in promoting the products and services identified by its mark, which has been continuously used since 1982.
Additionally, the Complainant is the registrant of various domain names including <comerica.net>.
The Complainant contends that the Respondent uses the disputed domain name to direct Internet traffic to its website and to other third party websites, “for which Respondent presumably receives compensation”.
The Complainant’s contentions are that:
a) The disputed domain name is confusingly similar to its mark;
b) The Respondent has no rights or legitimate interests in the disputed domain name;
c) The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant’s mark is arbitrary and distinctive, having been coined by the Complainant.
Various UDRP panels have found that a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy: e.g., The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.
Further, the addition of “www” does not affect the substantial similarity of the disputed domain name to the Complainant’s service mark COMERICA: e.g., InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069: “The addition of www before Complainant’s mark and the addition of "s" after the mark are not sufficient to avoid confusion. Indeed, they appear to be additions designed to take advantage of mistakes that consumers are likely to make when intending to enter Complaint’s web site address.”
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The disputed domain name reverts to a pay-per-click website displaying links to third-party websites offering competing services and products.
The Complainant asserts that it has not licensed or otherwise permitted the Respondent to use its mark or the disputed domain name.
It was open to the Respondent to demonstrate rights or legitimate interests in the disputed domain name by, for example, reliance on the circumstances set out in paragraph 4(c) of the Policy. The Respondent has not done so.
The Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s mark is arbitrary and distinctive, having been coined by the Complainant. The Complainant, in a carefully argued submission supported by authorities, contends that, “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 Panel accepts that such circumstances will at least constitute prima facie evidence of bad faith. See for example Comerica Incorporated v. Domains By Proxy Inc. / Web Services Pty, WIPO Case No. D2011-0703: “…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.”
Further, domain names consisting of well-known trademarks – used without authorization – may be evidence of registration and use in bad faith. This may be particularly so where the disputed domain name leads to a website consisting of links to products competitive with those of the trademark owner: e.g., Intel Corporation v. Pentium Fund, WIPO Case No. D2009-0156.
The Complainant in this case contends that Respondent uses the disputed domain name to direct Internet traffic to its website and to other third party websites.
The Respondent had the opportunity to answer the Complainant’s case by submitting a Response under paragraph 5 of the Rules, but has not done so. That basis of that case – unopposed by the Respondent – falls within the circumstances of paragraph 4(b)(iv) of the Policy, namely that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel is satisfied that the Complainant has proved 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 domain name <wwwcomerica.net> be transferred to the Complainant.
Anthony R. Connerty
Dated: July 27, 2011