WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. PrivacyProtect.org and Lourdes Ford, Temprano Media SA
Case No. D2012-1583
1. The Parties
The Complainant is Comerica Incorporated of Dallas, Texas, United States of America (“USA”), represented by Bodman PLC, USA.
The Respondents are PrivacyProtect.org of Nobby Beach, Queensland, Australia, and Lourdes Ford, Temprano Media SA of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <commericbank.com> (the “Domain Name”) is registered with Power Brand Center Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2012, naming a privacy service as the respondent.
The Center transmitted its request for registrar verification to the Registrar on August 7, 2012, and followed it up with reminders on August 10, 15, 17, and 24, 2012. The Center’s reminder of August 17, 2012, informed the Registrar that the Center would need to proceed on the basis of certain assumptions if the Registrar did not provide a response by August 20, 2012. The Center set out these assumptions in its email to the Registrar of August 24, 2012, and stated that it would proceed on the basis that these assumptions were correct in the absence of any response to the contrary from the Registrar by August 25, 2012.
Having received no response from the Registrar by August 25, 2012, and on the basis of the publicly available WhoIs information, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 28, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 17, 2012.
On August 30, 2012, the Registrar belatedly transmitted a response to the Center’s verification request. In it the Registrar confirmed that the UDRP applied to the Domain Name, that the registration agreement was in English, that the Domain Name had been placed under Registrar-Lock and that privacy protection had been removed pending the outcome of this proceeding. The Registrar also provided the contact details held on its WhoIs database in respect of the Domain Name, thereby identifying the underlying registrant. The Center forwarded this response to the Complainant’s representative on August 31, 2012, and invited the Complainant to make any further submissions by September 5, 2012. The Center also forwarded the Complaint to the email addresses for the registrant provided by the Registrar on August 31, 2012. The Center informed the Registrar that it was doing so and that the due date for response would remain September 17, 2012.
The Complainant did not make any further submissions and the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2012.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 27, 2012. 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. Having reviewed the file, the Panel is satisfied that the Complaint complied with all applicable formal requirements, that the Complaint was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a financial services company with headquarters in Dallas, Texas. It provides banking services from premises in Texas, Arizona, California, Florida and Michigan, and operates businesses in several other states of the United States, Canada and Mexico. It supplies and promotes its services under the mark COMERICA, which it has registered as a service mark on the United States Patent and Trademark Office’s (“USPTO”) Principal Register since September 20, 1983. It has its website at “www.comerica.com”.
The Domain Name is directed to a web page that displays links relating to banking services.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its mark COMERICA from which it differs only in the repetition of the letter “m”, the omission of the letter “a”, and the addition of the generic word “bank” and the generic top level domain suffix. According to the Complainant, consumers seeking the Complainant’s website might type the Domain Name through typographical errors.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that the Respondent has not used the Domain Name in connection with any bona fide offering of goods or services, that it is not commonly known by the Domain Name, that it is not making legitimate non-commercial or fair use of the Domain Name, and that it has not been licensed by the Complainant to use its mark or the Domain Name.
Finally, the Complainant alleges that the Domain Name has been registered and is being used in bad faith. The Complainant points out that it had used its COMERICA mark for 20 years before the Respondent registered the Domain Name. The Complainant contends that the Respondent is using the Domain Name intentionally to attract Internet users to its web page for commercial gain in the form of click-through commissions on sponsored links by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of this web page at the Domain Name. The Complainant also alleges that the Respondent registered and is using the Domain Name in order to disrupt the Complainant’s business and misappropriate its goodwill.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it 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. It is appropriate to consider each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has registered and unregistered trade mark rights in the mark COMERICA.
The Panel further finds that the Domain Name is confusingly similar to this mark. As the Complainant points out, apart from the inclusion of the generic work “bank” and the generic top level domain suffix, the Domain Name differs from the Complainant’s mark only in the repetition of the letter “m” and the omission of the letter “a”, which the Panel finds could result from typographical errors.
The Panel finds that the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has not used or made preparations to use the Domain Name for any bona fide offering of goods or services. The Respondent’s only use of the Domain Name has been for a web page containing sponsored links to other websites, including websites of competitors of the Complainant. The Panel does not regard this as a bona fide offering of goods or services in the circumstances.
The Panel also finds that the Respondent is not commonly known by the Domain Name and that it is not making any legitimate noncommercial or fair use of the Domain Name. The Panel further accepts the unchallenged statement of the Complainant that it has not consented to the Respondent’s registration or use of the Domain Name.
On the evidence in the file, the Panel finds that there is no other basis on which the Respondent could claim any right or legitimate interest in respect of the Domain Name. The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the undisputed evidence that, by its use of the Domain Name, the Respondent has intentionally attempted to attract Internet users to its web page by creating a likelihood of confusion with the Complainant’s trademark as to the source of this page, for commercial gain in the form of click-through commissions on sponsored links provided on this page to websites of third parties, including competitors of the Complainant.
In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of the Domain Name in bad faith.
There is no material in the file which displaces this presumption. Accordingly the Panel finds that the Domain Name has been registered and is being used in bad faith. The third requirement of the UDRP is 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, <commericbank.com>, be transferred to the Complainant.
Dated: October 10, 2012