WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Registrant : Charlie Kalopungi / Moniker Privacy Services
Case No. D2011-0896
1. The Parties
The Complainant is Comerica Incorporated, Detroit, Michigan, United States of America, internally represented.
The Respondent is Registrant : Charlie Kalopungi / Seychelles and Moniker Privacy Services, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <comericawbbanking.com> is registered with Moniker Online Services, LLC.
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 Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On May 26, 2011, Moniker Online Services, LLC 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. The Center sent an email communication to the Complainant on June10, 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 13, 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 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2011.
The Center appointed The Hon Neil Brown QC as the sole panelist in this matter on July 20, 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 large financial services and banking company incorporated in the United States of America. It is the registered proprietor of a series of trademarks and service marks for COMERICA registered with the United States Patent and Trademark Office including the service mark registered number 1,251,846 and 1,776,041 for banking services (collectively referred to as “the COMERICA mark”).
The Respondent registered the Disputed Domain Name on September, 2, 2010.
5. Parties’ Contentions
The Complainant alleges that the domain name, <comericawbbanking.com>, should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant's registered COMERICA mark, that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered COMERICA mark to which reference has already been made. It then says that the disputed domain name <comericawbbanking.com> is confusingly similar to the COMERICA mark as the disputed domain name incorporates the whole of the COMERICA mark and merely adds two letters, ”w” and “b” after COMERICA and the word “banking”. The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because he has used the COMERICA mark in the domain name, the facts show an obvious intention by the Respondent to benefit from the reputation of the COMERICA mark in an illegitimate manner, the domain name is not being used for a bona fide offering of goods and services and the Respondent has not been authorized to use the mark in a domain name or anywhere else.
The Complainant then contends, to establish the third element, that the disputed domain name has been registered and used in bad faith, because the facts show that the Respondent registered the disputed domain name primarily to trade off the Complainant's COMERICA mark and that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 the site or location. Moreover, the Respondent cannot use the COMERICA mark in a domain name in any way without violating the Complainant’s trademark rights and its registration and use of the Disputed Domain Name show that it has been both registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is 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 applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past WIPO UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel accepts the evidence submitted by the Complainant that it owns the registered COMERICA mark to which reference has been made and therefore has rights in that mark.
The domain name <comericawbbanking.com> is confusingly similar to the COMERICA mark as the domain name incorporates the whole of the COMERICA mark and merely adds two letters, ”w” and “b” to the normal spelling of COMERICA, the word “banking” and the gTLD suffix “.com”. The addition does not detract from or diminish the confusing similarity arising from the use of the COMERICA mark in the Disputed Domain Name as internet users would clearly regard it as merely a mistaken addition to COMERICA referring to its banking functions or perhaps a misspelt reference to “web banking”. It has also long been held that suffixes such as the gTLD suffix “.com” cannot negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
A panel's task in deciding if a respondent has any rights or legitimate interests in a domain name is made more difficult when the respondent is in default and does not file a response or any other form of submission. The Respondent in the present case was given notice that it had until July 4, 2011 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also accepted that a complainant must first make out a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name and that, if a prima facie case is made out, the onus of proof moves to the respondent to rebut that prima facie case.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The prima facie case is based on the facts that:
(i) the COMERICA mark is very well-known;
(ii) it indicates a prominent financial services and banking company in the United States of America and its services;
(iii) the Respondent chose this prominent trademark as part of his domain name and made only a slight change to it by adding two letters and the word “banking”, so that the resulting domain name was confusingly similar to the well known COMERICA mark in the manner indicated above;
(iv) the Respondent was not authorised or approved to use the COMERICA mark in a domain name or anywhere else and could not use it for a legitimate or lawful purpose.
The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Panel finds that the Complainant has therefore made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(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 the respondent's 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 the site or location.
The Complainant relies on the provisions of paragraphs 4(b) of the Policy and also on the general notion of bad faith, which he is clearly entitled to do, for there have been many UDRP panel decisions that have held that bad faith is not limited to the factors set out in that paragraph.
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the domain name was registered and is being used in bad faith. In particular, the facts bring the case squarely within the provisions of paragraph 4(b) (iii) and (iv) of the Policy. That is so for the following reasons.
The evidence shows that there was incorporated into the domain name when it was registered the Complainant's well known COMERICA trademark with two additional letters and the addition of the word “banking” which was clearly effected to mislead internet users and to give the false impression that the disputed domain name was an official domain name of the Complainant dealing with its banking functions performed on the internet.
Moreover, as the Complainant submits, the Respondent’s conduct is also bad faith as it shows the Respondent was ignoring the fact that he was infringing on the rights of a well known trademark.
The Complainant has also submitted that the Respondent’s use of the domain name to misdirect potential visitors to the Complainant’s websites to the Respondent’s site and other third party commercial sites, for which the Respondent presumably received remuneration, is a breach of paragraph 4(b)(iv) of the Policy.
Moreover, the whole modus operandi of the Respondent in acquiring and using such a well known trademark without any authority or legitimate purpose brings the registration and subsequently the use of the domain name within the general notion of bad faith.
Accordingly, the Panel concludes that the totality of the evidence shows that the Disputed Domain Name was registered and used in bad faith and that the Complainant has thus made out the third of the three elements that it must establish under 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 <comericawbbanking.com> be transferred to the Complainant.
The Hon Neil Brown QC
Dated: July 27, 2011