WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Sammy Lewis
Case No. D2013-1491
1. The Parties
The Complainant is Comerica Incorporated of Dallas, Texas, United States of America (“United States”), represented by Bodman PLC, United States.
The Respondent is Sammy Lewis of Carrollton, Texas, United States.
2. The Domain Names and Registrar
The disputed domain names <coamericacareclinic.co>, <coamericacareclinic.com>, <coamericacareclinic.info>, <coamericacareclinic.net>, <coamericacareclinic.org>, <coamericacare.co>, <coamericacare.com>, <coamericacare.info>, <coamericacare.net>, <coamericacare.org>, <comericacareclinic.co>, <comericacareclinic.com>, <comericacareclinic.info>, <comericacareclinic.net>, <comericacareclinic.org>, <comericacare.co>, <comericacare.com>, <comericacare.info>, <comericacare.net>, <comericacare.org>, <comericahealthgroup.co>, <comericahealthgroup.com>, <comericahealthgroup.info>, <comericahealthgroup.net> and <comericahealthgroup.org> (the “Domain Names”) are all registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2013. On August 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 23, 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 September 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2013.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 2, 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 publicly traded financial services holding company organized under the laws of the State of Delaware, United States, and headquartered in Dallas, Texas, United States. It is one of the 30 largest US banking companies, with bank locations in Texas and in several other states, as well as operations in Canada and Mexico. The Complainant’s group also offers life, health, long-term care, travel, home, and automobile insurance under the COMERICA brand.
The Complainant has used its coined company name as a service mark, alone or with descriptive terms or designs, since 1982. The Complainant’s registered marks include COMERICA (United States Registration No. 1251846, registered on September 20, 1983) and some 28 others that include the name COMERICA, such as COMERICA HOME EQUITY FLEXLINE, COMERICA TAX PAY, COMERICA EFX, and COMERICA PARK. In addition, the Complainant owns the mark CASH & CARE (United States Registration No. 4202068, registered on September 4, 2012). The Complaint indicates that the Complainant spends millions of dollars annually advertising the COMERICA brand. The name appears on the bank branches in its service areas, including the Dallas area where the Respondent resides, as well as online. The Complainant operates a website at “www.comerica.com”.
According to the Registrar’s WhoIs database, all 25 Domain Names were registered on June 17 or 18, 2013, in the name of the Respondent, who appears to be an individual residing in Carrollton, Texas, a suburb of Dallas. No Response was submitted in this proceeding, and there is no further information in the record concerning the Respondent.
There is also no evidence in the record that any of the Domain Names has been used for an active website operated by the Respondent. They all resolve to a landing page operated by the Registrar, displaying pay-per-click (“PPC”) advertising links for a variety of third-party goods and services, including financial services that apparently compete with those offered by the Complainant. As indicated on the Registrar’s website, the Registrar customarily “parks” registered domain names in this fashion until the registrant makes some other use of the domain names. It appears from the Registrar’s website that the Registrar does not share PPC advertising revenues from a parked domain name unless the registrant subscribes to a “CashParking” plan. The landing pages associated with the Domain Names include a link for the owner of the Domain Name to use the Registrar’s service to build a website, as well as a link for a site visitor to offer to purchase the Domain Name.
5. Parties’ Contentions
The Complainant contends that all of the Domain Names are confusingly similar to its COMERICA mark and that the Respondent is not authorized to use the mark.
The Complainant argues that the Respondent had actual or constructive notice of its well established COMERICA mark and used it in the Domain Names to “disrupt” the Complainant’s business and misdirect Internet users to search engine advertising, in a bad faith effort to “misappropriate” the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy applies to all of the Domain Names that are registered in the generic Top-Level Domain (gTLD) “.com” and also to the Domain Names that are registered in the country code Top-Level Domain (ccTLD) “.co”, which is assigned to Colombia but widely used by companies in other jurisdictions (see the registry operator’s website at “”www.go.co” and the Wikipedia article on “.CO”).
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate 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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant holds registered COMERICA trademarks. The Domain Names all include that mark, some with the slight misspelling “coamerica”, adding the letter “a”. Neither of those spellings represents a dictionary word in English. Each of the Domain Names adds one or more English words – “care”, “careclinic”, or “healthgroup”. The addition of generic terms to a distinctive mark does not avoid confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9. Moreover, the Complainant itself has numerous registered trademarks consisting of COMERICA plus generic terms or abbreviations, and the Complainant has registered a mark including the word “care”, CASH & CARE. The Complainant also offers health insurance and long-term care insurance. Thus, the Domain Names all use the Complainant’s invented name in combination with generic words that could reasonably be associated with the Complainant.
UDRP panels customarily treat the first element of a UDRP complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”; some panels refer as well to the “overall impression” created by the domain name. See WIPO Overview 2.0, paragraph 1.2. The Panel finds that these tests are met in this case, where each of the Domain Names includes the Complainant’s distinctive mark or a variation that differs by a single letter, with the addition of generic terms that are relevant to some of the Complainant’s offerings.
The Panel concludes that the Domain Names are all confusingly similar to the Complainant’s COMERICA mark for purposes of the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain names at issue, once the complainant has made a prima facie showing. See WIPO Overview 2.0, paragraph 2.1.
The Complainant has done so in this proceeding, by demonstrating that the Domain Names are confusingly similar to its invented and well-established COMERICA mark. The Respondent has not submitted a Response asserting rights or legitimate interests in the Domain Names. There is no evidence in the record or on the landing pages associated with the Domain Names that the Respondent uses corresponding names in a bona fide business, is known by a corresponding name, or makes a legitimate noncommercial or fair use of the Domain Names.
The Panel concludes on this record that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or . . .
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Complainant argues that the Respondent was probably aware of the Complainant’s mark and also cites a UDRP decision referring to the legal doctrine of “constructive notice” of a registered mark. This doctrine has been applied in some United States trademark cases. But UDRP panels generally do not ground findings of bad faith on the theory that the respondent should have been aware of a mark simply because it was registered in the same country, and the Panel declines to do so here. See WIPO Overview 2.0, paragraph 3.4. The Panel agrees, however, that the Respondent more likely than not had actual knowledge of the Complainant’s long-established mark, which is especially prominent in the geographic area where the Complainant is headquartered and the Respondent resides, a mark that is not a dictionary word and appears to have no generic significance. It is hard to imagine why these Domain Names featuring the coined term would have been chosen except for its trademark significance. This cannot be considered good-faith conduct when the Respondent has no evident rights to use the Complainant’s mark.
The Respondent has not yet used the Domain Names, so far as is known, but has allowed them to be parked for PPC landing pages that include a link for potential purchasers of the Domain Names. Even assuming that the Registrar rather than the Respondent has profited from any resulting advertising revenues, the Respondent remains responsible for the use of the Domain Names. The registration agreement includes the Respondent’s representation and warranty (in language mandated by the Policy, paragraph 2) that in registering a domain name, and in maintaining or renewing a registration:
“you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights.”
The Registrar may well cause unused domain names to default to a software-generated PPC landing page. However, the Respondent has ultimate control over the Domain Names and has allowed them to be used in this fashion for months. The advertising search engine generates links to financial services competitors of the Complainant, taking advantage of the presumed interests of Internet users familiar with the Complainant’s mark. This may not result from a deliberate decision by the Respondent (or the Registrar), but it is the foreseeable result of allowing the Domain Names to be used for PPC advertising based on search engine algorithms that detect website references to the Complainant’s mark, a term without generic significance that is included in each of the Domain Names. The Panel concludes that the Respondent demonstrates bad faith by allowing the Domain Names to be so used over time, and it is hard to believe that the Respondent did not contemplate the commercial value of misdirecting Internet users when the Respondent registered the 25 Domain Names containing the Complainant’s distinctive mark.
Moreover, there are many UDRP decisions involving domain names based on well-known marks, where the domain names similarly have not been employed for active commercial websites. Panels in those cases often find bad faith in the registration and “passive holding” of domain names that evidently have no generic but only trademark value. See WIPO Overview 2.0, paragraph 3.2, and cases cited therein, including the influential decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The current case is also one where “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name” without the permission of the trademark owner. The logical conclusion is that the Respondent selected the Domain Names for their trademark value, with the intention of later exploiting them, either through commercial use or sale.
The Panel concludes on the available record that the Respondent acted in bad faith within the meaning of the third element of the UDRP Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that each of the 25 Domain Names at issue in this proceeding,
be transferred to the Complainant.
W. Scott Blackmer
Date: October 11, 2013