WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Sarkis Kotschumian
Case No. D2013-1027
1. The Parties
The Complainant is Comerica Incorporated of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
The Respondent is Sarkis Kotschumian of Novi, Michigan, United States of America.
2. The Domain Names and Registrar
The disputed domain names <comericaparkboxofficetickets.com>, <comericaparkticketsboxoffice.com> and <comericaparktickets.com> (the “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 June 7, 2013. On June 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2013.
The Center appointed Michelle Brownlee as the sole panelist in this matter on July 12, 2013. 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 owns United States Trademark Registration Numbers 1,251,846 for the mark COMERICA for banking services and 2,434,031 for the mark COMERICA PARK for providing stadium facilities for sports and recreational activities. The registration for COMERICA claims a first use in commerce of February 26, 1982. The registration for COMERICA PARK claims a first use in commerce of December 28, 1998.
The Domain Names were registered on January 17, 2013.
5. Parties’ Contentions
The Complainant is a financial services company headquartered in Dallas, Texas. It is among the 30 largest banking companies in the United States. In addition to Texas, the Complainant has bank locations in Arizona, California, Florida and Michigan, with select businesses operating in other states, as well as Canada and Mexico. The Complainant invests millions of dollars every year in the promotion of products and services identified by the COMERICA trademark. The Complainant contends that the COMERICA mark is famous due to its long use and widespread commercial recognition. The Complainant is the registrant of the domain names <comerica.com>, <comerica.net> and <comerica.org>, among others.
The Complainant entered into a Naming Rights Agreement for a baseball stadium known as “Comerica Park” that is located in Detroit, Michigan. The Detroit Tigers baseball team has played in the stadium since 2000.
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s COMERICA and COMERICA PARK trademarks. The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant submits that the Domain Names were registered and are being used in bad faith. The Domain Names are being used to access parking pages that display links to advertisements and generate revenue for click-throughs on the ads. The Complainant argues that the Domain Names use the Complainant’s well-known trademarks to attract Internet users to the Respondent’s web sites for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks, and that the Respondent’s use of the Domain Names demonstrates an intent to disrupt the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that the COMERICA and COMERICA PARK marks are well-known. When a famous mark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the famous mark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140. In this case, the Respondent has paired the Complainant’s COMERICA PARK mark with the less distinctive terms “tickets” and “box office.” Because both of those terms are associated with the Complainant’s sports stadium services, the potential for confusion is exacerbated. Under these circumstances, the Panel finds that the Domain Names are confusingly similar to the Complainant’s COMERICA PARK mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Names in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Names or that the Respondent is making a noncommercial or fair use of the Domain Names, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent is using the Domain Names in connection with web sites that create a likelihood of confusion with the Complainant’s trademarks and are not conducting any business on the site, other than to generate click-through advertising revenue. The Respondent has not refuted those allegations. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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; or
(ii) the respondent 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; or
(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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has alleged that the Domain Names have been used in connection with web sites that attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks, presumably to generate click-through advertising revenue. The Respondent did not reply to these contentions. Under the circumstances, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <comericaparkboxofficetickets.com>, <comericaparkticketsboxoffice.com> and <comericaparktickets.com> be transferred to the Complainant.
Date: July 26, 2013