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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comerica Bank and ConnectYourCare, LLC v. Domains By Proxy, LLC/Kevin Wall

Case No. D2013-1970

1. The Parties

The Complainants are Comerica Bank of Dallas, Texas, United States of America (“US”) and ConnectYourCare, LLC of Hunt Valley, Maryland, US, represented by Bodman PLC, US.

The Respondent is Domains By Proxy, LLC/ Kevin Wall of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <comericaconnectyourcare.com> 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 November 19, 2013. On November 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2013, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on November 29, 2013 providing the registrant and contact information disclosed by the Registrar and invited the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on December 3, 2013.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.

The Center appointed Ross Wilson as the sole panelist in this matter on January 9, 2014. 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 paragraph 7 of the Rules.

4. Factual Background

The first Complainant is a corporation providing financial services headquartered in Texas, US and with bank locations in Arizona, California, Florida and Michigan and select businesses in several other states as well as in Canada and Mexico. It is among the 30 largest US banking companies with over USD 62 billion in assets. It invests in the promotion of its products and services identified by its mark.

The second Complainant is a business that administers Health Savings Accounts, Flexible Spending Accounts, Health Reimbursement Arrangements and other tax-advantaged accounts. Its Health Savings Account has about two million members. The second Complainant administers a Health Savings Account offered by the first Complainant.

Both Complainants have trademarks registered in the US. The COMERICA trademark was first registered in September 1983, and the CONNECTYOURCARE trademark was registered in December 2008.

The Complainants provided evidence in their consolidated Complaint of a Consent Agreement dated November 7, 2013 that states “the parties have agreed that the domain will be transferred to Comerica.”

The disputed domain name was registered in January 2013.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the disputed domain name is identical or confusingly similar to their trademarks since it combines both marks. Also, the Complainants contend that before any notice to the Respondent of the dispute there was no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bone fide offering of goods and services. Similarly there is no evidence that the Respondent has rights or legitimate interests arising from a legitimate noncommercial or fair use of the disputed domain name.

The Complainants state that the disputed domain name was registered in bad faith as the Respondent must have known of the Complainants evidenced by the juxtaposition of the marks in the disputed domain name which suggests the Respondent was aware of the fact that ConnectYourCare administers a Health Saving Account offered by Comerica. The Complainants consider that bad faith use is demonstrated by the Respondent intentionally attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ marks as to the source sponsorship, affiliation or endorsement of the Respondent’s website. Further the Complainants contend that bad faith is demonstrated through the Respondent having engaged in a pattern of registering domain names that bear a striking resemblance to famous marks as it has been the respondent in at least two UDRP cases where the panels have ordered the transfer or cancellation of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

The burden is on the Complainants to prove each of the three elements set out in paragraph 4(a) of the Policy:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel considers the disputed domain name clearly consists of a combination of the Complainants’ trademarks. Both Complainants have rights in their separate trademarks which make up the disputed domain name, and it follows that the Complainants have rights in the combined mark. In similar circumstances the panel in Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1110 found that the complainant has rights in both the trademarks.

The Panel notes that the disputed domain name consists of the Complainants’ two trademarks in their entirety together with the generic Top-Level Domain (“gTLD”) extension “.com”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306). With respect to the gTLD extension “.com” the general rule is that it can be disregarded when considering whether a trade mark is identical or confusingly similar to a domain name.

The Panel finds that the Complainants’ trademarks are readily recognisable within the disputed domain name. Therefore, the Complainants have proven under the circumstances that the disputed domain name is confusingly similar to the trademarks in which they have demonstrable rights and in doing so have satisfied the first element of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:

- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or

- has been commonly known by the domain name; or

- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has chosen to use a disputed domain name confusingly similar to the Complainants’ marks in their entirety without authorization from the Complainants. Based on the evidence provided by the Complainants the website for the disputed domain name accesses a parking page with links, where some of the links promote financial services that compete with the services provided by the first Complainant. The Panel considers no rights or legitimate interests derive from such use of the disputed domain name which is confusingly similar to the Complainants’ marks.

The Complainants have denied having any connection or affiliation with the Respondent and that the use of its trademark is without license or authorisation. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”.

The Panel considers the Respondent lacks rights or legitimate interests in the disputed domain name. See Areva v. Domains by Proxy, Inc./ Sheng Xiang, WIPO Case No. D2011-0061 where the panel concluded that when the respondent registered the disputed domain name, it must have known that it was a trademark of the complainant and deliberately registered the disputed domain name precisely because it would be recognized as such. As stated by the panel in Hertz System, Inc. v. Domainproxyagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615 “[m]anifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.

Despite the opportunity provided through this administrative proceeding, the Respondent has chosen not to rebut the Complainants’ prima facie case or assert any rights or legitimate interests in the disputed domain name.

Based on the above, the Panel considers the Complainants have made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainants have proven the second element of the Policy.

C. Registered or Subsequently Used in Bad Faith

For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the disputed domain name in bad faith may be evidenced.

Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) 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 Complainants state that the Respondent must have known of the Complainants’ rights when the disputed domain name was registered. The Complainants point out that using that knowledge the Respondent sought to trade off the Complainants’ goodwill by creating an unauthorized association between it and the marks COMERICA and CONNECTYOURCARE for the purposes of commercial gain.

The Panel considers that the Complainants have made a case that the Respondent has registered and used the disputed domain name in bad faith. In the Panel’s view, the Respondent’s registration of the disputed domain name represents a deliberate disregard of the Complainants’ rights. Clearly the Respondent knew of the Complainants’ marks at the time of registration because the Complainants’ marks are used in their entirety in the disputed domain name. As stated by the panel in Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100 “It is therefore inconceivable […] that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641, where the selection in that case of the domain names is so obviously connected to the complainant’s trademark, their very use by someone with no connection with the company suggests opportunistic bad faith.

The Panel considers the Respondent’s use of the disputed domain name to divert Internet user traffic to the Respondent’s website by providing pay-per-click links to websites of the Complainants’ competitors clearly represents bad faith. Overall the Panel finds it most likely that the disputed domain name was registered and used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainants’ marks for financial gain.

Noting that the Respondent has not rebutted any of the Complainants’ contentions and has no demonstrable rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainants demonstrated that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <comericaconnectyourcare.com> be transferred to the Comerica Bank, the first Complainant in accordance with the requested remedy.

Ross Wilson
Sole Panelist
Date: January 23, 2014

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