WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Online Management / Registration Private, Domains By Proxy, LLC
Case No. D2014-1018
1. The Parties
The Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
The Respondent is Online Management of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom and Great Britain / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <c0merica.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 June 13, 2014. On June 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2014, the Registrar transmitted by email to the Center its verification response 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 Complainant on June 19, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 19, 2014.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 11, 2014.
The Center appointed Daniel Peña as the sole panelist in this matter on July 23, 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 the Rules, paragraph 7.
4. Factual Background
The Complainant is a financial services company headquartered in Dallas, Texas.
In addition to Texas, the Complainant has bank locations in Arizona, California, Florida and Michigan, with select businesses operating in several other states of the United States of America, as well as in Canada and Mexico.
The Complainant is the owner of several United States of America registrations for its trademarks and service marks, including the following:
Registration No. 1,251,846 for the service mark, COMERICA, for use in banking services. The Complainant has used this mark in connection with these services since 1982.
Registration No. 1,776,041 for the service mark, COMERICA (and Design), for use in "banking services." The Complainant has used this mark in connection with these services since 1992.
The Complainant is the domain name registrant for the domain names <comerica.com>, <comerica.net> and <comerica.org>.
The disputed domain name was created on December 9, 2013. It resolves to a webpage with sponsored links.
5. Parties' Contentions
The Complainant is among the 40 largest United States of America holding companies with USD 65.4 billion in assets at December 31, 2013.
The Complainant invests millions of dollars every year in the promotion of the products and services identified by their registered trademarks.
As a result of its long use and the widespread commercial recognition of their registered trademarks, the Complainant trademarks are famous under United States of America federal and state trademark laws.
The disputed domain name is identical to the COMERICA trademarks, except that the letter "O" in the Mark is replaced with the numeral zero (or "0") in the disputed domain name. Given the similarities of the letter "O" and the numeral "0", this replacement results in a domain name that is confusingly similar to the Complainant's trademarks.
The disputed domain name is phonetically identical to the Complainant's trademarks, as well as to the Complainant's domain name <comerica.com>.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Complainant has shown that it has rights in the COMERICA trademarks registered and used in the United States of America.
In the Panel's view, the disputed domain name is basically identical to the COMERICA trademark. The only change of the letter "O" in the trademark which is replaced with the numeral zero (or "0") in the disputed domain name confirms the fact that the disputed domain name is confusingly similar to the COMERICA trademarks.
The disputed domain name incorporates the whole of the trademarks COMERICA to and adds the generic Top Level Domain ".com" (gTLD). The Panel sets forth the addition of the gTLD suffix does not alter or diminish in any way the confusing similarity between the Complainant's COMERICA trademarks and the disputed domain name.
Therefore, the Panel considers that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several manners in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) it has not licensed or otherwise authorized the Respondent to use its COMERICA trademarks or to incorporate them into a domain name; (2) that, given the extensive use of the Complainant's trademarks and the fact that it is uniquely linked to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (3) that the current use of the disputed domain name does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent's web site or location or of a product or service on its website or location.
In the Panel's view a finding of bad faith may be made where the Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark COMERICA mainly in United States of America is such that the Respondent, must have had knowledge of the trademark before registering the dipsuted domain name.
The Complainant has demonstrated that its trademarks are widely recognized and that the disputed domain name incorporates in full its trademarks with a mispelling of the letter "O" instead of the numeral zero (or "0") and that the Respondent has no relationship to the COMERICA trademarks. In this Panel's view, the Respondent is using the disputed domain name with the mentioned mispelling to intentionally attract, for commercial gain, Internet users to the website linked to disputed domain name in a manner that confuses and misleads Internet users. Thus, the Panel infers the Respondent's bad faith based on the fact that the Respondent is trying to gain profit of mistakes such as typographical errors made by Internet users, when inputting the expression "c0merica" instead of "comerica" into a web browser.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
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 <c0merica.com> be transferred to the Complainant.
Date: August 6, 2014