WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Domains By Proxy, LLC / Martin Schwaller
Case No. D2012-1373
1. The Parties
The Complainant is Comerica Incorporated of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
The Respondent is Domains By Proxy, LLC / Martin Schwaller of Scottsdale, Arizona, United States of America and Wien, Austria, respectively.
2. The Domain Name and Registrar
The disputed domain name <comericaonlinebanking.info> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 5, 2012. On July 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 10, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 11, 2012, 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 July 16, 2012.
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 July 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2012. The Respondent submitted communications on July 31, 2012, and the Parties were notified that the Center would be proceeding to Panel appointment on August 7, 2012. On August 7, 2012, the Respondent again communicated with the Center and the parties entered into settlement negotiations. The Center suspended the proceedings on August 8, 2012. After failing to reach a settlement, the Complainant requested the proceedings be reinstituted and this case was recommenced on September 10, 2012, with the deadline for a Response extended until September 15, 2012. The Parties were Notified that the Center would be proceeding to appoint an Administrative Panel on September 17, 2012.
The Center appointed Steven A. Maier as the sole panelist in this matter on September 25, 2012. 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 United States (“U.S.”) financial services company based in Dallas, Texas. It has locations elsewhere within the U.S. and also in Canada and Mexico. As at March 31, 2012, it had assets of USD 62.6 billion.
The Complainant is the owner of numerous U.S. registered trade marks, including registration number 1,251,846 for the service mark COMERICA for use in “banking services”, which it has used since 1982.
The Respondent registered the Domain Name on May 17, 2012.
At the date of the Complaint, the Domain Name resolved to a website at “www.comericaonlinebanking.info”, being a directory website offering links to various financial services providers.
5. Parties’ Contentions
The Complainant refers to its registered trade marks including the mark referred to above. It also relies on unregistered rights in the mark COMERICA and states that the mark enjoys widespread commercial recognition based on its use over many years. The Complainant states that it invests millions of dollars every year in products and services sold under the mark. It is also the registrant of domain names including <comerica.com>, <comerica.net> and <comerica.org>.
The Complainant submits that the Domain Name is identical or confusingly similar to the Complainant’s mark COMERICA because it combines that mark with the generic words “online banking”. The addition of these words does nothing to distinguish the Domain Name and merely exacerbates the similarity, since Internet users are likely to assume that the website to which it resolves, containing links to other financial services providers, is operated by the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. In particular, there is no evidence that before receiving notice of the dispute the Respondent used, or made demonstrable preparations to use, the Domain Name in connection with any bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by, or has acquired any trade or service mark rights in, a name corresponding to the Domain Name. The Respondent is not making any legitimate non-commercial or fair use of the Domain Name and, on the contrary, is using it for a directory site linking to providers of services similar to the Complainant’s, from which it presumably receives compensation. The Complainant has not licensed or otherwise permitted the Respondent to use its trade mark in the Domain Name.
The Complainant submits that the Domain Name was registered and has been used in bad faith. In particular, the Complainant contends that the Respondent must have known of the Complainant’s trademark, which is a well-known mark that has been in use for 30 years. In the circumstances, the Respondent’s registration and subsequent use of the Domain Name for similar services to those offered by the Complainant is sufficient alone to establish bad faith. However, it is also clear that the Respondent is attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website to which the Domain Name resolves, or the products or services advertised on that website. The Respondent is diverting Internet traffic away from the Complainant and to the Respondent’s website, which demonstrates a clear intention to disrupt the Complainant’s business, deceive consumers and trade off the Complainant’s goodwill.
The Complainant seeks a transfer of the Domain Name.
The Respondent did not file a formal Reply to the Complainant’s contentions.
However, on July 31, 2012, the Respondent, Martin Schwaller, emailed the Center to say the Respondent was unaware of having infringed any rights and was happy to relinquish the Domain Name. Following further correspondence Mr. Schwaller, confirmed on August 7, 2012, that the Respondent was content either to delete or transfer the Domain Name, but was unable to do so as the Registrar had a lock on the Domain Name. Further confirmation to this effect was sent by the Respondent to the Complainant’s representative, but for reasons that are not clear to the Panel a voluntary transfer was not effected and a Panel Appointment was requested by the Complainant on September 6, 2012.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of the U.S. registered trademark COMERICA for banking services and that by virtue of its use of that mark in commerce for approximately 30 years it has acquired substantial goodwill in that mark in the field of financial services. Accordingly, the Panel finds that the Complainant has rights in the mark COMERICA for the purposes of paragraph 4(a) of the Policy. The Panel accepts the Complainant’s contention that the term “comerica” is the distinctive element of the Domain Name and that the element “onlinebanking” is essentially descriptive in nature. In the view of the Panel that element does not detract from the distinctive nature of the mark COMERICA within the Domain Name, but is suggestive instead of services to be provided by reference to it.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, there are three sets of circumstances in particular (but without limitation) to which a respondent may point, to demonstrate rights or legitimate interests in a disputed domain name. These are:
(i) before any notice to the respondent of the dispute, its 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) that the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) that the respondent is 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.
The Panel accepts the Complainant’s submissions with regard to the Respondent’s lack of “rights or legitimate interests”. The Respondent has tendered no evidence in this case, and on the evidence available to it the Panel does not consider that any of the above, or any other circumstances which would tend to indicate any rights or legitimate interests of the Respondent in the Domain Name, are present. The Panel infers from all the circumstances that the Respondent registered and is using the Domain Name with the intention of diverting Internet users who intend to access a website operated or endorsed by the Complainant to a pay-per-click website offering links to providers of goods and services including those who offer services similar to those of the Complainant. The Panel finds that this use unfairly takes advantage of the Complainant’s goodwill. To the extent that the Respondent is using the Domain Name to offer goods or services, such offering is not bona fide. There is no evidence in the Panel’s view that the Respondent has been commonly known by the Domain Name, and the circumstances set out in subparagraph (iii) of Policy, paragraph 4(c) above plainly do not apply.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the conclusions it has reached under “rights or legitimate interests” above are also indicative of bad faith on the part of the Respondent.
In addition, paragraph 4(b)(iv) of the Policy provides that the following circumstance, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds that the Respondent’s registration and use of the Domain Name falls within this provision.
The Panel finds that, by the Respondent’s use of the Domain Name, the Respondent is intentionally attempting to attract Internet users who intend to access a website operated or endorsed by the Complainant or its affiliate to the Respondent’s own commercial website. Further, the Panel has found that the Respondent is taking unfair advantage of the Complainant’s goodwill by diverting those Internet users to websites including those offering services similar to those offered by the Complainant.
The Panel therefore concludes accordingly that the 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 disputed domain name <comericaonlinebanking.info> be transferred to the Complainant.
Steven A. Maier
Dated: October 3, 2012