WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Comerica Merchant Services
Case No. D2012-1678
1. The Parties
Complainant is Comerica Incorporated, of Dallas, Texas, United States of America.
Respondent is Comerica Merchant Services of La Grange, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain names <comericapayments.com> and <comericabankmerchantservices.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 24, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 27, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 28, 2012.
The Center verified that the Complaint, together with the amended 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 August 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 21, 2012.
The Center appointed Lynda M. Braun as the sole panelist in this matter on October 2, 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 among the twenty five largest United States banking companies, with USD 62.6 billion in assets on March 31, 2012. In addition to Texas, Complainant has bank locations in Arizona, California, Florida and Michigan, with select businesses operating in several other states, as well as in Canada and Mexico.
Complainant is the owner of numerous United States trademark registrations, including:
- United States Registration No. 1,251,846 for the service mark COMERICA, for use in banking services. The date of first use for this registration is 1982.
- United States Registration No. 1,776,041 for the service mark COMERICA AND DESIGN, for use in banking services. The date of first use for this registration is 1992.
Complainant indicates that it invests millions of dollars a year in the promotion of its COMERICA services. Complainant is the owner of the domain name registrations <comerica.com>, <comerica.net> and <comerica.org>, among others.
The Disputed Domain Name <comericapayments.com> was registered on February 27, 2012 and the Disputed Domain Name <comericabankmerchantservices.com> was registered on March 16, 2012.
5. Parties’ Contentions
First, Complainant alleges that the Disputed Domain Names are confusingly similar to its trademark because the Disputed Domain Names include Complainant’s trademark COMERICA with the addition of non-distinctive words. Complainant alleges that the COMERICA trademark is coined, distinctive, powerful and symbolizes the goodwill of Complainant. Further, Complainant asserts that additional confusion results from the fact that the Disputed Domain Names resolve to websites that display Complainant’s trademarks and posts a link inviting Internet users to apply for a credit card. Second, Complainant claims that there is no indication that Respondent has rights or legitimate interests in the Disputed Domain Names. Complainant explains that there is no evidence that Respondent has been commonly known by a name corresponding to the Disputed Domain Names; that there is no evidence that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain; and Complainant asserts that it has not licensed Respondent or otherwise permitted Respondent to use the trademark or the Disputed Domain Names. Third, Complainant alleges that Respondent registered and used the Disputed Domain Names in bad faith because Respondent knew or should have known that the trademark was well known and widely used; that the circumstances surrounding Respondent’s registration and use of the Disputed Domain Names indicate that such registration and use was done to trade on the name and reputation of Complainant; and Respondent used the Disputed Domain Names in an unlawful phishing scheme.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Disputed Domain Names:
(i) That the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) That Respondent has registered and is using the Disputed Domain Names in bad faith. These elements are discussed as follows:
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Names, <comericapayments.com> and <comericabankmerchantservices.com>, which incorporate Complainant’s trademark in its entirety, are confusingly similar to that trademark.
Complainant has valid and well established rights in its COMERICA trademarks. The words “payments” and “bank merchant services” in the Disputed Domain Names are descriptive and indicate that the website offers banking products and financial services. The addition of the word “payments” in the first Disputed Domain Name and the words “bank merchant services” in the second Disputed Domain Name do not remove the similarity but increase the risk of confusion for consumers. Consumers would likely believe that any website to which the Disputed Domain Names would resolve offers Complainant’s well-known financial services.1
It is well established that the addition of descriptive or generic words to a trademark does nothing to change an otherwise identical or confusingly similar domain name. Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (the panel found confusing similarity where “shop” and a hyphen were added to the trademark of the complainant in the disputed domain name). See also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity).
Accordingly, the first element of paragraph 4(a) of the Policy has been met by Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Names, or that Respondent had any authority, license or permission to use Complainant’s trademark.
Furthermore, Complainant has not authorized, licensed or otherwise permitted Respondent to use its trademarks. Thus, the use of identical trademarks on the websites that were available in August could not be considered a bona fide offering of services under this element. Nor was Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names. Respondent was using the Disputed Domain Names for commercial gain.
Although the websites available in August are no longer in existence, the websites to which the Disputed Domain Names currently resolve contain sponsored links to a variety of third party sites that promote financial and banking services. Respondent undoubtedly collects referral fees for these links on the pay-per-click websites. Prior UDRP decisions have made it clear that such use does not constitute a legitimate use of a domain name or the legitimate offering of goods or services. PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Thus, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.2 Instead, Respondent is using the Disputed Domain Names for commercial gain.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by Complainant.
C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that a respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product on respondent’s website or location.
Policy, paragraph 4(b).
This Panel finds that based on the record, Complainant has demonstrated the existence of Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, Respondent registered and used the Disputed Domain Names in bad faith because Respondent was attempting to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s trademarks. Respondent was also preventing Complainant from making a legitimate use of the Disputed Domain Names. Respondent’s registration and use of the Disputed Domain Names indicate that such registration and use was done for the specific purpose of trading on the name and reputation of Complainant and its trademarks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).
Second, Respondent’s action of registering the Disputed Domain Names and using them to direct Internet traffic to its websites evidence a clear intent to disrupt Complainant’s business, deceive customers and trade off Complainant’s goodwill by creating an unauthorized association between Respondent and Complainant’s trademark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552.
Third, the websites to which the Disputed Domain Names currently resolve contain sponsored ads to various websites that promote financial or banking services, among other items. As such, Respondent is not only trading on consumer interest in Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the websites, but Respondent also derives commercial advantage in the form of referral fees. This constitutes bad faith. Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128.
Further, when the links on pay-per-click landing pages are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices constitute abusive cybersquatting. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (same).
Third, assuming that Complainant’s allegations regarding the previous use of the Disputed Domain Names in a phishing scheme are true, which this Panel accepts in the absence of any rebuttal evidence submitted by Respondent, such action constitutes evidence of bad faith. Respondent created websites that were identical to those of Complainant and appeared to be legitimate. Respondent could have (and, indeed, may have) stolen Internet users’ valuable information such as social security numbers, credit card numbers and usernames and passwords. See Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001 (“[p]hishing is the criminally fraudulent process of attempting to acquire sensitive information such as usernames, passwords and credit card details by masquerading as a trustworthy entity in an electronic communication.”).
The use of the Disputed Domain Names in a phishing scheme also amounts to bad faith because such use can tarnish the image of the Complainant, whose name, website design and layout have been wrongly used. See Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228.
Finally, Respondent knew or should have known of Complainant’s rights in its trademarks when registering the Disputed Domain Names and creating websites that appeared to be legitimate Comerica websites promoting financial services. Complainant’s trademarks are well known, widely used and had been in use by Complainant for thirty years. Indeed, when a domain name contains a well-known trademark, no other action, aside from registering the domain name, is required for a finding of bad faith. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by Complainant.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <comericapayments.com> and <comericabankmerchantservices.com> be transferred to Complainant.
Lynda M. Braun
Dated: October 13, 2012
1 The Disputed Domain Names do not currently resolve to active websites. As of the date of this Decision, the Disputed Domain Names resolve to parking pages hosted by the Registrar, which contain sponsored pay-per-click links to finance-related websites. It is common knowledge that the way in which many of these services operate is that the domain parking service operators obtain “click through revenue” when Internet users click on the “sponsored links” on the displayed pages. Many of these services will then provide the domain name registrant with part of that “click through” revenue.
Complainant submitted evidence in its Complaint that on various dates in August, 2012, the Disputed Domain Names resolved to websites ostensibly created by Respondent that contained virtual imitations of Complainant’s trademarks and where Internet users were invited to apply for a credit card. Internet users arriving at these websites would have likely assumed that Complainant was the sponsor of such websites. These websites no longer exist.
2 Although there is nothing per se illegitimate in using a domain parking service, linking a domain name to such a service with a trademark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page, is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.