WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Kevin Wall and Domains By Proxy, LLC
Case No. D2013-1218
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 Kevin Wall of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Domains By Proxy, LLC, of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <comreica.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 July 5, 2013. On July 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2013, the Registrar transmitted its verification to the Center by email 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 to the Complainant on July 16, 2013 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 19, 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 July 23, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2013.
The Center appointed Petter Rindforth as the sole panelist in this matter on August 16, 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 paragraph 7 of the Rules.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is a financial services company, headquartered in Dallas, Texas, United States of America (“USA”). The Complainant is the owner of several trademark registrations issued by the United States Patent and Trademark Office (“USPTO”), including:
COMERICA (word), Registration Number 1,251,846, registered on September 20, 1983 for “banking services” in Class 36; and COMERICA (and design), Registration Number. 1,776,041, registered on June 8, 1993 for “banking services” in Class 36.
The disputed domain name <comreica.com> was registered on February 10, 2013. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
According to the Complainant, the COMERICA trademark is coined, distinctive and powerful, and symbolizes the goodwill of the Complainant, who invests millions of dollars every year to promote goods and services associated with the trademark. The trademark is therefore famous in the USA. The Complainant also holds several domain names for the trademark, such as <comerica.com>, <comerica.net> and <comerica.org>.
The Complainant asserts that the disputed domain name is nearly identical to the trademark COMERCIA, with the only difference of the transposition of the letters “e” and “r”. This typographical error would be commonly made by Internet users and is not sufficient to distinguish <comreica.com> from the trademark COMERICA. Additional confusion results because the website associated with the disputed domain name is a parking page with various sponsored links including for financial services similar to the services provided by the Complainant.
Further, the Complainant argues that the Respondent has no rights or legitimate interest in <comreica.com>. The Complainant has not given the Respondent any license or other permission to use the trademark or the disputed domain name, and the Respondent cannot lawfully obtain any intellectual property rights to any words that are confusingly similar to COMERICA. There is no evidence that the Respondent is making any legitimate non-commercial or fair use of <comreica.com>.
Finally, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent must have known of the Complainant’s rights in the trademark when registering <comreica.com>, and the parking page associated with the disputed domain name contains links promoting financial services that are similar to the Complainant’s services.
According to the Complainant, the fact that the disputed domain name resolves to a parking page with sponsored links evidences that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website or location.
The Complainant requests that the Panel order that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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 Complainant has obtained multiple trademark registrations for COMERICA (e.g., Reg. No. 1,251,846 of September 20, 1983) with the USPTO.
The Panel finds that the Complainant has established rights in the COMERICA trademark for purposes of the Policy through its trademark registrations with the USPTO. See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttal presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The relevant part of the disputed domain name is “comreica”. The addition of the generic top-level domain “.com” is insufficient to distinguish the disputed domain name from the Complainant’s mark.
The Respondent’s disputed domain name contains a misspeling of the Complainant’s mark, namely, a transposition of the letters “e” and “r”. Altering a trademark by transposing two letters mid word - as in this case - is not enough to escape a finding of similarity. See VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446 (“Respondent appears to have employed minor misspellings of Complainant’s mark to take bad faith advantage of spelling errors made by Internet users while attempting to enter Complainant’s Internet address on their web browsers. Bad faith in selecting a domain name may contribute to a finding of confusing similarity”); see also Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314 (“In the Panel’s view, this is a case of ‘typosquatting’ where the domain name is a slight alphabetical variation from a famous mark. WIPO jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user”).
The Panel therefore concludes that <comreica.com> is confusingly similar to the Complainant’s trademark COMERICA.
B. Rights or Legitimate Interests
Once the complainant establishes a prima facie case of the second element of the Policy, the burden shifts to the respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.
By not submitting a formal Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case under the same paragraph of the Policy.
The Respondent has no rights to use the Complainant’s trademark and is not an authorized agent or licensee of the Complainant’s products, services or trademarks.
As shown by the Annex 9 of the Complaint, the Respondent has used the disputed domain name for a website to host sponsored links to third-party websites offering, inter alia, financial services similar to, and in competition with, the services provided by the Complainant.
As established in a number of UDRP cases of similar circumstances, such use cannot constitute a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (“Bona fide use does not exist when the intended use is [a] deliberate infringement of another’s rights”); see also Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade… off Complainant’s trademark… is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent).
Typosquatting occurs when a respondent purposefully includes typographical errors in the trademark portion of a disputed domain name to divert Internet users who make such typographical errors. In this case, the disputed domain name takes advantage of Internet users who mistype the Complainant’s COMERICA trademark. The Panel concludes that the Respondent’s engagement in typosquatting is further evidence that the Respondent does not have rights or legitimate interests in <comreica.com>.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name is an obvious misspelling of the Complainant’s trademark and is used for a website with sponsored links to competing goods and services. Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name, and that it did not intentionally transpose the two letters to differentiate its domain name from the Complainant’s trademark. See Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274 (“Respondent most likely knew that Complainant was the holder of the… Marks. It would have been difficult to believe that Respondent would have registered the Domain Name without to know the foregoing. First of all, it adopted the slightest variations possible for circumventing the domain name as registered, up to the extent of a “typo squatting”. For that end, Respondent would necessarily have had to investigate the registries and perhaps Complainant itself”); see also The Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492.
The disputed domain name is used for a website with links to other websites offering for sale competing services.
In the absence of a response from the Respondent, this Panel cannot draw any other conclusion than one that the Respondent tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith); see also Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274 (“Respondent has registered and used the Domain Name with the sole purpose to attract Internet users and divert them to other locations, in particular sites of third parties promoting similar if not competitive services.… it is clear that Respondent knows what he is doing and that he is not precisely acting in good faith. Actual and potential customers of Complainant could be mislead [sic] to a different location, driven by confusion, and when in that erroneous location, believe that Respondent has been granted a sponsorship, has become affiliated to Complainant, or his activities have been endorsed by this latter”).
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 <comreica.com> be transferred to the Complainant.
Date: August 19, 2013