WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Zhichao Yang / Whois Privacy Protection Service, Inc., Whois Agent
Case No. D2013-1184
1. The Parties
The Complainant is Comerica Incorporated, Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
The Respondent is Zhichao Yang of Hefei, Anhui, China / Whois Privacy Protection Service, Inc., Bellevue, Washington, United States of America.
2. The Domain Names and Registrar
The disputed domain names <comericaconvenientcard.com>, <comericaconviencecard.com> and <comericaconviniencecard.com> (the “Domain Names”) are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2013. On July 3, 2013, the Center transmitted a request by email to the Registrar asking for registrar verification in connection with the Domain Names. On July 3, 2013, the Registrar transmitted its verification response to the Center by email, disclosing the registrant and the contact information for the Domain Names which differed from the named Respondent and the contact information in the Complaint. The Center sent an email to the Complainant on July 5, 2013 providing it with the 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 July 10, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August, 5, 2013.
The Center appointed Geert Glas as the sole panelist in this matter on August 27, 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 is a financial services company headquartered in Dallas, Texas. It is among the 30 largest banking companies in the United States, with branches in Arizona, California, Florida and Michigan.
The Complainant is the owner of numerous United States registrations for its trademarks and service marks, including the service mark COMERICA CONVENIENCE CARD for banking and financial services.
The Domain Names were registered on March 1, 2013. According to the evidence submitted by the Complainant, the Domain Names lead to a parked pay-per-click site featuring sponsored links to websites of providers of financial services.
5. Parties’ Contentions
The Complainant requests the transfer of the Domain Names on the following grounds:
(i) the Domain Names are identical or confusingly similar to a service mark in which the Complainant has rights.
The Complainant contends that the Domain Names are nearly identical to its service mark COMERICA CONVENIENCE CARD, except that, in place of the word “convenience”, one Domain Name uses the word “convenient”, another the word “convinience”, and yet another the misspelled word “convience”. These differences are not sufficient to distinguish the Domain Names from the Complainant’s service mark registered on January 15, 2013, with a first use in commerce in 2011.
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names.
The Complainant contends that it has never licensed or authorized the Respondent to use the COMERICA CONVENIENCE CARD service mark.
Furthermore, the Respondent is not using the Domain Names in connection with a bona fide offering of goods and services. It has intentionally chosen the Domain Names in order to generate traffic and income through a parking page featuring (sponsored) links to financial services which are similar to the Complainant’s financial services.
(iii) the Domain Names were registered and are being used in bad faith.
The Complainant submits that:
- it is highly unlikely that the Respondent was not aware of the Complainant’s rights in this well-known trademark and service mark at the time of registration;
- the Respondent is using the Domain Names to intentionally attempt to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites;
- by using the Domain Names in such a way, it is clear that the Respondent intends to disrupt the Complainant’s business, deceive consumers, and trade off the goodwill and reputation of the Complainant; and
- the Respondent has engaged in a pattern of registering domain names that bear striking resemblance to famous marks, and has been the respondent in at least three UDPR cases where the National Arbitration Forum has ordered the transfer or cancellation of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant proves each and all of the following three elements in order to be successful in these proceedings:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of the service mark COMERICA CONVENIENCE CARD for banking and financial services.
The Domain Names differ from the Complainant’s service mark only by substitution of the letters “ce” (convenience) by the letter “t” (convenient) and by misspelling “convenience” as, respectively, “convinience and “convience”. These minor alterations cannot prevent a finding of confusing similarity between the service mark and the Domain Names (see, e.g., Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Dow Jones & Co. v. Powerclick, Inc., WIPO Case No. D2000-1259; Nationstar Mortgage LLC v. Zhichao Yang, NAF Claim No. FA 1450754).
Accordingly, the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or produce evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the policy (see, e.g., Document Technologies Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”, paragraph 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names.
Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent has been commonly known by the Domain Names or has been authorized to use the Complainant’s service mark.
Moreover, previous UDRP panel decisions have confirmed that using a domain name to generate traffic to a pay-per-click parking website, thereby diluting or tarnishing the reputation of a complainant's trademark or service mark, cannot be considered a bona fide offering of goods and services, or a noncommercial or fair use of the domain name (see, e.g., Florida Department of Management Services v. Anthony Gorss, WIPO Case No. D2009-1194; Telekom AG v. Dong Wong, WIPO Case No. D2005-0819; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
The Respondent has failed to respond to the Complaint and has therefore failed to come forward with any allegation or provide any evidence of its rights or legitimate interests in the Domain Names.
Based on the evidence provided by the Complainant, the Panel finds that the second element under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
(i) Registered in bad faith
Because of the phonetic and visual similarity between the Domain Names and the Complainant’s service mark, the Panel finds it unlikely that the Respondent would not have had knowledge of the Complainant’s rights in this service mark. Indeed, it is well-settled case law that the practice of typosquatting, may in itself be evidence of a bad faith registration of a domain name (see, e.g., Longs Drug Stores Cal, Inc. v. Shep Dog, WIPO Case No. D2004-1069; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-1034).
Moreover, the Respondent has engaged in a pattern of registering domain names that bear a resemblance to famous and/or well-known marks, and has been involved in several UDPR cases where the National Arbitration Forum has ordered the transfer or cancellation of the disputed domain name (see, e.g., Nationstar Mortgage LLC v. Zhichao Yang, NAF Claim No. FA 1450754; Capital One Financial Corp v. Zhichao Yang, NAF Claim No. 1473336; Wells Fargo & Company v. Zhichao Yang, NAF Claim No. 1477756). The fact that the Respondent has a history of registering domain names that closely resemble famous and/or well-known marks only strengthens the inference of bad faith (see, e.g., MouseSavers, Inc. v. Tsung, WIPO Case No. D2004-1034).
(ii) Used in bad faith
As the Domain Names lead to a pay-per-click website, the Panel finds that the Respondent attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's service mark. This finding is corroborated by the fact that this website offers sponsored links to the websites of financial institutions which constitute competitors of the Complainant.
The Panel concurs with the understanding of several other UDRP panels that the use of a domain name to direct traffic to a website that offers sponsored links to other (competing) websites is evidence of bad faith (see Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556). It does not matter whether the respondent is the beneficiary of these commercial gains or whether the commercial gains accrue elsewhere. It is sufficient that a third party stands to reap the profits of the respondent's wrongful conduct (see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).
For the above reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <comericaconvenientcard.com>, <comericaconviencecard.com> and <comericaconviniencecard.com> be transferred to the Complainant.
Date: September 11, 2013