WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comerica Bank v. Brett Hoover

Case No. D2014-0288

1. The Parties

Complainant is Comerica Bank of Dallas, Texas, United States of America (“U.S.”), represented by Bodman PLC of Ann Arbor, Michigan, U.S.

Respondent is Brett Hoover of Carlisle, Pennsylvania, U.S.

2. The Domain Name and Registrar

The disputed domain name <comericaj.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 27, 2014, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 7, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 27, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 28, 2014.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 3, 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 paragraph 7 of the Rules.

4. Factual Background

Complainant states, and provides evidence to support, that it is “a financial services company headquartered in Dallas, Texas. It is among the 40 largest U.S. holding companies with $65.4 billion in assets at December 31, 2013. In addition to Texas, Complainant has bank locations in Arizona, California, Florida and Michigan, with select businesses operating in several other states, as well as in Canada and Mexico.”

Complainant has provided appropriate evidence to support its ownership of trademarks that consist of or include the mark COMERICA (collectively, the “COMERICA Trademark”), including U.S. Reg. No. 1,251,846 for COMERICA (first used in commerce on February 26, 1982; registered on September 20, 1983), for use in connection with “banking services.”

The Disputed Domain Name was created on January 25, 2014. Complainant states, and provides evidence to support, that the Disputed Domain Name is used in connection with “a parking page with links to financial services that are similar to the financial services provided by the Complainant” – including links labeled “PNC Bank,” “Bank Account,” “First National Bank com” and “Comerica Bank CD Rates” (among others).

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights because, inter alia, the Disputed Domain Name contains the COMERICA Trademark in its entirety plus the letter “j,” which is “a common typographical error made by Consumers attempting to access the website of the Complainant” and which “addition is not sufficient to distinguish the disputed domain name from” the COMERICA Trademark.

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[s]earches conducted on February 4, 2014 of the Internet using the Google search engine and the search terms ‘comericaj’, ‘comericaj.com’ and ‘comericaj Brett Hoover’ showed no results indicating use of the disputed domain name in connection with a bona fide offering of goods or service”; “[t]here is no evidence that the Respondent has been commonly known by a name corresponding to the disputed domain name or any portion thereof”; “the evidence shows the disputed domain name accesses a parking page with links where the Respondent presumably receives compensation for every visit by an Internet user”; and Complainant “has not licensed the Respondent or otherwise permitted the Respondent to use the [COMERICA Trademark] or the disputed domain name, and that the Respondent does not own and cannot lawfully obtain any trademark or intellectual property rights in the [COMERICA Trademark] or any words or phrases that incorporate or are confusingly similar to the [COMERICA Trademark].”

- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “[w]hen a domain name contains a well-known mark such as ‘Comerica’, or a misspelling thereof, no other action, aside from registering the domain name, is required for a finding of bad faith”; “[t]he disputed domain name accesses a parking page with sponsored links[, which]… evidences that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location”; and “Respondent’s action of registering the disputed domain name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant’s business, deceive consumers, and trade off of the Complainant’s goodwill by creating an unauthorized association between it and the [COMERICA Trademark].”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the COMERICA Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the COMERICA Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “comericaj”), as it is well-established that the top-level domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”).

This Panel agrees with Complainant that the Disputed Domain Name likely represents “a common typographical error made by Consumers attempting to access the website of the Complainant,” given the strength of the COMERICA Trademark and the lack of any apparent meaning or significance to the Disputed Domain Name other than its similarity to the COMERICA Trademark. Indeed, numerous panels have found that “the mere addition of one letter can be defined as a case of ‘typosquatting’, namely a conduct that aims at reaching Internet users that would misspell the name of a certain domain name.” Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828.

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that, inter alia, Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[s]earches conducted on February 4, 2014 of the Internet using the Google search engine and the search terms ‘comericaj’, ‘comericaj.com’ and ‘comericaj Brett Hoover’ showed no results indicating use of the disputed domain name in connection with a bona fide offering of goods or service”; “[t]here is no evidence that the Respondent has been commonly known by a name corresponding to the disputed domain name or any portion thereof”; “the evidence shows the disputed domain name accesses a parking page with links where the Respondent presumably receives compensation for every visit by an Internet user”; and Complainant “has not licensed the Respondent or otherwise permitted the Respondent to use the [COMERICA Trademark] or the disputed domain name, and that the Respondent does not own and cannot lawfully obtain any trademark or intellectual property rights in the [COMERICA Trademark] or any words or phrases that incorporate or are confusingly similar to the [COMERICA Trademark].”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or 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 UDRP.” WIPO Overview 2.0, paragraph 2.1.

Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Here, Complainant argues that bad faith exists pursuant to paragraph 4(b)(iii) and 4(b)(iv) of the Policy. Among other things, Complainant has argued that Respondent’s use of the Disputed Domain Name in connection with “a parking page with links to financial services that are similar to the financial services provided by the Complainant” – including links labeled “PNC Bank,” “Bank Account,” “First National Bank com” and “Comerica Bank CD Rates” (among others) – constitutes bad faith. Numerous panels repeatedly have agreed with this argument. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.

7. Decision

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 <comericaj.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Date: April 17, 2014