Complainant is Comerica Bank, United States of America (“United States” or “U.S”), represented by Bodman PLC, United States.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Dea Garcia, United States.
The disputed domain names <comericabankcoin.com>, <comericabanknft.com>, <comericacoin.com>, <comericanft.com> are registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2021 in relation to the domain names <my-comerica.com>, <comeirica.com>, <comericanft.com>, <comericacoin.com>, <comericabanknft.com> and <comericabankcoin.com>. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 19, 2021 in relation to the domain names <comericanft.com>, <comericacoin.com>, <comericabanknft.com> and <comericabankcoin.com> (the “disputed domain names”). The domain names <my-comerica.com> and <comeirica.com> were excluded for this proceeding.
The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2021. The Center received an email communication from Respondent on April 15, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 25, 2021. 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.
Complainant is a financial services company headquartered in Dallas, Texas, United States. As of December 31, 2020, Complainant was among the 35 largest U.S. banks and had over USD 88 billion in assets. 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 has used the COMERICA trademark in the United States since 1982, and has secured numerous registrations in the United States and in other jurisdictions for the COMERICA mark (e.g. U.S. registration no. 1,251,846, registered on Sep. 20, 1983) and other COMERICA-formative marks. Prior UDRP panels have found Complainant’s COMERICA mark to be well-known. See, e.g., Comerica Bank v. Kerry Fritz II, www.bankoftheplanetearth.com, WIPO Case No. D2017-2498. Complainant owns domain names corresponding to its COMERICA mark, including <comerica.com>, <comerica.net>, and <comerica.org>.
Respondent registered the disputed domain names <comericanft.com>, <comericacoin.com>, <comericabanknft.com>, and <comericabankcoin.com> on March 18, 2021. The disputed domain names all resolve to parked pages that include links to other websites offering financial services that compete with Complainant’s financial services offerings.
Complainant asserts that that disputed domain names are each confusingly similar to Complainant’s COMERICA trademark. According to Complainant, the disputed domain names each incorporate the mark exactly and each merely adds certain dictionary words or abbreviations (specifically, “bank”, “coin”, or “nft”) following the mark, which does not obviate confusing similarity.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. According to Complainant, Respondent cannot have rights or legitimate interests in the disputed domain names because Complainant had established trademark rights prior to the registration of the disputed domain names. Complainant asserts that it has not granted Respondent a license or otherwise permitted Respondent to use the COMERICA mark or the disputed domain names. According to Complainant, there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain names (or names corresponding to the disputed domain names) in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use, as the disputed domain names merely resolve to parked pages containing links to other websites offering financial services that compete with Complainant’s financial services offerings. Complainant also notes that there is no evidence that Respondent has been commonly known by the disputed domain names.
Complainant asserts that Respondent registered and used the disputed domain names in bad faith. According to Complainant, Respondent knew or should have known that the disputed domain names were confusingly similar to Complainant’s COMERICA mark given that the mark is well-known and has been in longstanding use well before Respondent registered the disputed domain names. Complainant asserts that Respondent used the disputed domain names in bad faith given that the disputed domain name merely resolve to monetized parked pages or Respondent’s use otherwise constitute passive holding of the disputed domain names. Complainant also notes that it sent a cease and desist letter to Respondent on March 30, 2021, but that Respondent gave no response. According to Complainant, Respondent is utilizing the COMERICA mark within the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the mark as to the source, sponsorship, affiliation, or endorsement of the website, that Respondent’s action of registering the disputed domain name and using it to direct Internet traffic to its website evidences a clear intent to disrupt Complainant’s business and deceive consumers, and that Respondent’s actions constitute a blatant attempt to misappropriate Complainant’s well-established, famous mark.
Respondent sent an email to Complainant on April 15, 2021, shortly following the filing of the original Complaint in which Respondent asserts that she purchased “each URL you’re referencing” lawfully, and that they are “my property”. Respondent denied “all claims stating any property in [Respondent’s] possession is being used fraudulently”. Respondent noted that the domain names <my-comerica.com>, <comeirica.com>, and <profilecomerica.com>, which were included in the original Complaint but later removed from this proceeding per the amended Complaint, are not her property. Finally, Respondent stated that she was “open to listening to any conversation you would like to have regarding the purchase of these assets which I own lawfully”. Respondent did not file any further Response following Complainant’s submission of the amended Complaint.
Paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The record shows that Respondent is the registrant for all of the disputed domain names. The Panel therefore finds that consolidation of the disputed domain names into this single proceeding is appropriate.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, section 4.3 of the WIPO Overview 3.0 states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions despite its generalized informal response to the original Complaint in this matter, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the COMERICA mark through its United States registration and various other registrations.
With Complainant’s rights in the COMERICA mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top-Level Domain (“TLD”) in which the domain names are registered) are identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
Here, the disputed domain names all fully incorporate the COMERICA mark. The addition of various dictionary terms or abbreviations, namely “bank”, “coin”, and/or “nft”, following the mark in each disputed domain name does nothing to prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to its COMERICA mark.
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the COMERICA mark in any way. There is no evidence suggesting that Respondent is commonly known by the disputed domain names. Respondent also does not appear to be using the disputed domain names in connection with any bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the disputed domain names. Respondent used the disputed domain names to direct Internet users to monetized parked pages containing links to other websites offering financial services that compete with those offered by Complainant under its COMERICA mark. Displaying links to third-party websites selling goods or services highly similar to those being sold under Complainant’s mark through domain names that are almost identical to Complainant’s mark clearly shows that Respondent is attempting to capitalize on the goodwill and reputation of Complainant’s mark and not for any bona fide offering of goods and services or noncommercial or fair use. See WIPO Overview 3.0, section 2.9.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain names within the meaning of Policy, paragraph 4(a)(ii).
Paragraph 4b(ii) of the Policy states that bad faith use and registration can be found when 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. UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.
The Policy also indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. UDRP panels have found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use. See WIPO Overview 3.0, section 3.1.4.
In this case, bad faith can be found in the registration and use of the disputed domain names. Complainant provided ample evidence to show the widespread use of the well-known COMERICA mark that predates Respondent’s registration of the disputed domain names. Therefore, Respondent was likely aware of the COMERICA mark when she registered the disputed domain names, or knew or should have known that they were identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Furthermore, the disputed domain names are clearly targeting Complainant’s mark since they fully and identically incorporate Complainant’s mark. All three disputed domain names resolved to websites displaying links to other websites offering goods or services similar or identical to those offered by Complainant under Complainant’s COMERICA mark. This is clear evidence that Respondent is using the disputed domain names, which are confusingly similar to Complainant’s Marks, to attract Internet users, for commercial gain, to Respondent’s websites, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of a product or service on Respondent’s websites.
Furthermore, Respondent has also engaged in a clear pattern of registrations targeting Complainant’s mark. Respondent registered the disputed domain names on the same day, all of which fully and identically incorporate Complainant’s COMERICA mark. The registration of multiple domain names incorporating Complainant’s mark along with various terms and abbreviations relevant to the financial services industry in which Complainant operates constitutes a clear pattern of conduct aimed at preventing Complainant from reflecting its COMERICA mark in corresponding domain names under paragraph 4(b)(ii) of the Policy. see also Salvatore Ferragamo S.p.A v. Ying Chou, WIPO Case No. D2013-2034.
For these reasons, this the Panel finds that Respondent registered and used the disputed domain names in bad faith, pursuant to paragraphs 4(b)(ii) 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 names, <comericabankcoin.com>, <comericabanknft.com>, <comericacoin.com>, and <comericanft.com>, be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: May 28, 2021