WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. domainnamesbyproxy.com Inc.
Case No. D2012-1377
1. The Parties
Complainant is Comerica Incorporated of Dallas, Texas, United States of America (“U.S.”) represented by Bodman LLP, U.S.
Respondent is domainnamesbyproxy.com Inc. of Scottsdale, Arizona, U.S.
2. The Domain Name and Registrar
The disputed domain name <comeruca.com> (“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 9, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2012.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 10, 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
Complainant is a financial services company headquartered in Dallas, Texas. It is one of the twenty-five largest banking companies in the U.S. It has bank locations in various states as well as Canada and Mexico. Complainant owns numerous U.S. trademark registrations including U.S. Registration No. 1,251,846 (registered on September 20, 1983) for COMERICA for use with “banking services” (“the COMERICA Mark” or “the Mark”), which it has used since 1982. Complainant also owns registrations for the domain names <comerica.com>, <comerica.net>, and <comerica.org>.
Respondent registered the Domain Name on April 1, 2012. The related website contains links to a variety of banking services from a variety of banking companies that compete with Complainant such as PNC Bank, Citadel Bank, and Bank of America.
5. Parties’ Contentions
The COMERICA Mark is coined and distinctive. Complainant invests millions of dollars every year in promoting products and services under the Mark. As a result of its long use and the widespread commercial recognition, the Mark is famous.
The Domain Name is identical or confusingly similar to the Mark with only the replacement of the letter “i” with the letter “u”. This would be a common typographical error made by consumers attempting to access Complainant’s website. The replacement of one letter is not sufficient to distinguish the Domain Name from the Mark. Additional confusion results from the fact that the Domain Name is associated with a parking page with links to financial services that are similar to the financial services provided by Complainant.
Complainant has not licensed Respondent or otherwise given permission to use the Mark or Domain Name. There is no evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Respondent has not acquired any trademark or service mark rights in marks corresponding to the Domain Name or any portion of it. The evidence shows the Domain Name is connected to a parking page with sponsored links where the Respondent presumably receives compensation for each visit by an Internet user and that some of these links promote financial services that are similar to the financial services provided by Complainant. Thus, Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Respondent must have known of Complainant’s rights in the Mark because it is a well-known trademark, and because the webpage associated with the Domain Name promotes financial services that are similar to Complainant’s financial services. Respondent is intentionally attempting to attract for commercial gain Internet users to Respondent’s webpage by using the Domain Name to attract them there where sponsored links for financial services exist from which Respondent presumably receives compensation for every visit by Internet users.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no dispute over Complainant’s trademark rights in the COMERICA Mark. It is registered with the U.S. Patent and Trademark Office and, therefore, is entitled to a presumption of validity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 1.1 (“If the complainant owns a trademark then it generally satisfies the threshold requirement of having trademark rights.”).
The Panel finds Respondent has engaged in typosquatting by registering the Domain Name <comeruca.com>, a practice by which a registrant deliberately introduces slight deviations into well-known marks for commercial gain. See, e.g., Marriott International, Inc. v. Seocho, NAF Claim No. 149187 (finding <marriottt.com> confusingly similar to <marriott.com>). The Domain Name is virtually identical to Complainant’s COMERICA Mark, differing only by the replacement of the letter “i” with the letter “u”. Because Respondent has committed typosquatting, the Domain Name at issue is, by definition, confusingly similar to Complainant’s COMERICA Mark. Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095. Furthermore, the Domain Name is both visually and phonetically similar to the COMERICA Mark, further heightening the likelihood of confusion. See, Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716 (finding the domain name <expediua.com> confusingly similar to <expedia.com> and noting the visual and phonetic similarity of the two).
Additionally, confusion results from the fact that the website associated with the Domain Name directs Internet users to a parking page with links to banking services that are similar to those Complainant provides. See Comerica Incorporated v. Wan-Fu china, Ltd., WIPO Case No. D2007-0590.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant asserts that Respondent cannot have any rights or legitimate interests in the Domain Name because: (1) Respondent has not been commonly known by the Domain Name; (2) Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain because the Domain Name is being used on a site that contains hyperlinks to third-party sites, many offering competitive banking services, from which the Respondent likely derives click-through revenue; and (3) Respondent’s use of the Domain Name has not been in connection with a bona fide offering of goods or services, rather with an infringing one.
Complainant’s assertions and evidence, without contrary evidence from Respondent, are sufficient to permit a finding in Complainants’ favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
By failing to submit a Response, Respondent has failed to invoke any of the circumstances that could demonstrate it did not register and use the Domain Name in bad faith.
Respondent registered the Domain Name <comeruca.com> on April 1, 2012, over twenty-nine (29) years after Complainant began using the COMERICA Mark. Given Complainant’s long-term use of the Mark and the fact that Respondent incorporated the entirety of the Mark in the Domain Name but for the replacement of one letter, the Panel finds it is highly unlikely Respondent was unaware of Complainant Comerica or its rights in the COMERICA Mark when it registered the Domain Name.
With regard to bad faith use, Respondent is using a domain name that is confusingly similar to Complainant’s COMERICA Mark in conjunction with a site having sponsored links to various products and services, including banking services offered by unrelated third-party competitors (e.g., PNC Bank, Citadel Bank, and Bank of America). The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s COMERICA Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893, see also, Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <comeruca.com> be transferred to Complainant.
Harrie R. Samaras
Dated: August 24, 2012