WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Trail Version
Case No. D2014-0117
1. The Parties
Complainant is Comerica Bank of Dallas, Texas, United States of America (the “USA”), represented by Bodman PLC, USA.
Respondent is Trail Version of “Maryland”, “Ohio”, “Florida”, USA.
2. The Domain Name and Registrar
The disputed domain name <bnkcommerica.com> is registered with LiquidNet Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2014. On January 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 4, 2014.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on March 5, 2014. 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
Complainant is a financial services company, one of the thirty largest banks in the USA, with USD 62.6 billion in assets. Complainant has banking locations throughout the middle and western parts of the USA, and in Canada and Mexico. Complainant has numerous USA service mark registrations, including COMERICA, which claims a first use date of February 26, 1982. It also is the registrant of the domain names <comerica.com>, <comerica.net> and <comerica.org>, since the 1990s.
Respondent registered the disputed domain name on November 23, 2013. Respondent provided false or inaccurate contact information by listing a phone number with too many digits, giving an address with no street number, three states, and a zip code with too many digits. The disputed domain name reverts to a single web page that references a blog that purportedly is coming soon, and invites Internet users to register their names and emails. When Complainant attempted to do so, its attempt yielded an error message and the attempt failed.
5. Parties’ Contentions
Complainant asserts that it has rights in the COMERICA marks. It contends that the disputed domain name is confusingly similar to Complainant’s marks because it consists of Complainant’s COMERICA mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name are the misspellings of the word “bank” and the mark. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a 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 complainant has rights;
(ii) 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
As set forth above, Complainant owns numerous US registrations for its COMERICA mark. This satisfies the requirement that the mark is one in which the Complainant has rights.
The disputed domain name differs from Complainant’s COMERICA mark only in two insignificant respects: 1) the addition of the misspelled common word “bank”; and 2) the misspelling of the mark itself.
The disputed domain name contains Complainant’s COMERICA mark in its entirety. Numerous previous UDRP WIPO decisions have held that the addition of a common word does not distinguish a disputed domain name from complainant’s mark or preclude a finding of confusing similarity. See, e.g, Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Additionally, a domain name that contains a common or obvious misspelling of a trademark is confusingly similar to the mark where the misspelled trademark remains the dominant or principal component of the domain name. See, e.g., Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
Accordingly, the Panel finds that Complainant has rights in the COMERICA mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion. Once such prima facie case is made, the burden of production shifts to the respondent.
Complainant has exclusive rights in the COMERICA mark and has not authorized Respondent to register and use the disputed domain name. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the COMERICA mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name or that it is making a bona fide offering of goods or services under the disputed domain name. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Registration in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant’s marks and banking services when Respondent registered the disputed domain name. The fact that the disputed domain name contains the entirety of Complainant’s COMERICA mark as well as the addition of the misspelled word “bank” indicates that Respondent knew Complainant used the mark in relation to banking services. Complainant has used the COMERICA mark since 1982, over thirty years before Respondent registered the disputed domain name. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Additionally, since Respondent gives an address (though inaccurate) in the USA, under 15 USC §1072, registration of the mark COMERICA mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.
Use in Bad Faith
Respondent’s domain name reverts to a web page that does not make active use of Complainant’s mark. However, the bad faith can be found in a situation involving a passive holding of the disputed domain name. Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. In Telstra, the panel considered the specific circumstances of the case, including the following:
(i) complainant’s trademark has a strong reputation and is widely known;
(ii) respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) respondent has taken active steps to conceal its true identity;
(iv) respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by respondent that would not be illegitimate.
Here, Complainant’s COMERICA mark has a strong reputation and is well known. Respondent has provided no evidence of any actual or contemplated good faith use. Respondent has taken active steps to conceal its true identity and actively provided false contact details by giving a false and inaccurate address and phone number. There appears to be no plausible use of the disputed domain name that would not be illegitimate.
This Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith under paragraph 4(a)(iii) 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 <bnkcommerica.com> be transferred to Complainant.
Sandra A. Sellers
Date: March 18, 2014