WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. PrivacyProtect.org and Maying Joe, Ready Asset Limited
Case No. D2012-1585
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 Australia and Maying Joe, Ready Asset Limited of Pyongyang, Democratic People’s Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <comcerica.com> (the “Domain Name”) is registered with RegisterMatrix.com 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. The Registrar responded on August 13, 2012, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the Domain Name would expire on October 19, 2012, and had been placed on Registrar lock, and that the registration agreement was in English. The Registrar also identified the underlying registrant and provided the full contact details held on its WhoIs database in respect of the Domain Name.
The Center informed the Complainant on August 16, 2012, that the Registrar had identified the underlying registrant and invited the Complainant to submit an amendment to the Complaint by August 21, 2012. The Complainant filed an amendment to the Complaint on August 20, 2012, to identify the underlying registrant as the Respondent and to include the contact information as provided by the Registrar.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 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 together with the amendment to the Complaint complied with applicable formal requirements, 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 USA, Canada and Mexico. It supplies and promotes its services under the mark COMERICA which it has registered as a service mark on the 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 inclusion of an extra letter “c”. According to the Complainant, consumers seeking the Complainant’s website might type the Domain Name through typographical errors. The Complainant considers that additional confusion results from the direction of the Domain Name to a web page displaying sponsored links to financial services similar to those provided by itself.
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 noncommercial or fair use of the Domain Name and that it has not been licensed by the Complainant to use 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. 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 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 addition of the generic top level domain suffix, the Domain Name differs from the Complainant’s mark only in the insertion of an additional letter “c”, which could result from typographical error.
This conclusion is reinforced by the nature of the sponsored links displayed on the Respondent’s web page. The comparison that must be made under this first requirement of the UDRP is between the disputed domain name and the complainant’s mark, so that the content of the web page cannot make a domain name confusingly similar to the complainant’s mark if it is not, nor prevent it from being confusingly similar if it is. Nevertheless, the fact that the sponsored links on the Respondent’s web page relate to banking and financial services is further evidence that the Domain Name is associated with the Complainant.
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.
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 it. 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 before the Panel, 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 <comcerica.com> be transferred to the Complainant.
Dated October 10, 2012