WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Commerica Commodities
Case No. D2014-0378
1. The Parties
Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
Respondent is Commerica Commodities of Houston, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names <commericacommodities.biz>, <commericacommodities.com>, <commericacommodities.net> and <commericacommodities.org> (the "Domain Names") are registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 11, 2014. On March 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 13, 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.
On March 12, 2014 the Center received an informal communication from Respondent.
On March 13, 2014 the Center sent a communication to the Parties regarding a possible settlement of this dispute. The proceedings were suspended as of March 17, 2014 until April 17, 2014. On March 24, 2014 the Complainant requested the re-institution of the proceedings, which was formerly notified to the parties by the Center on March 25, 2014.
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 March 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2014. On April 15, 2014 the Center received several informal communications from Respondent. Respondent did not submit any further formal response. Accordingly, the Center notified the commencement of the panel appointment process on April 15, 2014.
On April 14, 2014 the Center received a communication from Complainant notifying of the existence of a court proceeding, in which Complainant lodged a civil complaint against Respondent alleging trademark infringement, violation of the United States Anticybersquatting Consumer Protection Act, and other claims. On April 17, 2014 the Center received a Supplemental Filing from Complainant. On May 5, 2014, the Center received a Supplemental Filing from Respondent and on May 9, 2014 the Center received an informal communication from Respondent regarding the aforesaid Supplemental Filing from Respondent.
The Center appointed Christopher S. Gibson as sole panelist in this matter on April 22, 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.
Court Proceedings and Supplemental Filings
The Rules provide for the submission of the Complaint by Complainant and the Response by Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules grant the Panel discretion to determine the admissibility of Supplemental Filings received from either Party. Accordingly, it is within the discretion of the Panel to determine whether to consider and/or admit the Supplemental Filings that have been submitted by the Parties in this case.
The Panel determines that it will admit and consider the Supplemental Filings that have been submitted by both of the Parties in this case. Moreover, even with court proceedings having been initiated by Complainant, the Panel exercises its discretion to proceed to a decision in this case, rather than suspend or terminate these administrative proceedings. The Panel observes in this regard that both Parties, notwithstanding the court proceedings, have put forward their full submissions concerning the Domain Names.
4. Factual Background
Complainant is a financial services company headquartered in Dallas, Texas and is among the 30 largest United States banking companies with USD 65.4 billion in assets as of December 31, 2013. In addition to Texas, Complainant has bank locations in Arizona, California, Florida and Michigan, with businesses operating in several other states, as well as in Canada and Mexico.
Complainant owns United States registrations for its trademarks, including:
- Registration No. 1,251,846 for the service mark, COMERICA, for use in "banking services." Complainant has used this mark in connection with these services since 1982.
- Registration No. 1,776,041 for the service mark, COMERICA (and Design), for use in "banking services." Complainant has used this mark in connection with these services since 1992.
Complainant has also registered the domain names <comerica.com> (registered September 19, 1995), <comerica.org> (registered February 9, 1998) and <comerica.net> (registered March 3, 2003).
Each of the Domain Names in dispute was registered on November 28, 2013.
On March 16, 2014, Respondent's new company, The Rerum Group, registered the domain name <rerumgroup.com>.
5. Parties' Contentions
(1) Identical or confusingly similar
Complainant contends that its trademark, COMERICA, is distinctive and powerful and symbolizes its goodwill. Complainant states that it invests millions of dollars every year in the promotion of the products and services identified by the mark. As a result of long use and the widespread commercial recognition, Complainant claims the mark is famous under United States federal and state trademark laws. In addition, Complainant has registered the domain names <comerica.com>, <comerica.net> and <comerica.org>.
Complainant asserts the Domain Names are identical or confusingly similar to Complainant's COMERICA mark because the name "Commerica" in the Domain Names is nearly identical to the mark but for the addition of the letter "m". This could be a common typographical error made by consumers attempting to access a website of Complainant. Moreover, confusing similarity is not diminished by the addition of the non-distinctive word "commodities." Complainant argues it is well-established that the addition of non-distinctive text to a complainant's mark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy. In this case, the dominant component of the Domain Names is the confusingly similar word, "commerica", with the addition of the non-distinctive word "commodities," which is a word that is widely used in economics. Indeed, "commodities" are traded in financial markets, thereby increasing the likelihood of confusion in this case since Complainant provides financial services. As such, the addition of the non-distinctive wording "commodities" to the Domain Names does not serve to distinguish them from Complainant's COMERICA mark.
(2) Rights or legitimate interests
Complainant states there is no indication that Respondent has rights or legitimate interests in the Domain Names. Complainant did not authorize, license, or otherwise permit Respondent to use the COMERICA mark in the Domain Names. Complainant further asserts that Respondent does not own and cannot lawfully obtain any trademark or intellectual property rights in the COMERICA mark or any words or phrases that incorporate or are confusingly similar to this mark.
On November 25, 2013, a limited liability company named Commerica Commodities Group LLC registered to do business in Texas. On March 11, 2014, Complainant sent a cease and desist letter to this company demanding that it immediately stop infringing Complainant's trademark rights. As of March 11, 2014, there was no evidence that Commerica Commodities Group had provided goods or services. Complainant alleges that any goods or services that may be provided in the future by Commerica Commodities Group would not be in connection with a bona fide offering of goods or services because a use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services.
Moreover, searches confirm that Respondent has registered no trademark or service mark rights in marks that correspond to the Domain Names or any portion thereof. Searches conducted on March 11, 2014 of the records of the United States Patent and Trademark Office, the Trademarks and Designs Registration Office of the European Union and WIPO showed no applications or registrations owned by Respondent.
In addition, Complainant states there is no evidence that Respondent is making a legitimate noncommercial or fair use of the Domain Names. Instead, the evidence shows that three of the Domain Names, <commericacommodities.biz>, <commericacommodities.net> and <commericacommodities.org>, access a parking page with links where Respondent presumably receives compensation for every visit by an Internet user, and the fourth Domain Name, <commericacommodities.com>, accesses a holding page with the posted words "Coming Soon".
(3) Registered and used in bad faith
Complainant contends that the Domain Names should be considered as having been registered and used in bad faith by Respondent. According to Complainant, the Domain Names were registered in bad faith because Respondent must have known of Complainant's rights at the time of registration. The COMERICA mark is a well-known trademark and had been in use by Complainant for over thirty years by the time Respondent registered the Domain Names. Furthermore, Complainant's principal place of business is in Texas while Commerica Commodities Group's business registration is also in Texas, making it even more likely that Respondent must have known of Complainant. Complainant argues that it is well-established that when a domain name contains a well-known mark, a finding of bad faith may be made where the respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name.
Complainant alleges the Domain Names are also being used in bad faith by Respondent. Three of the Domain Names, <commericacommodities.biz>, <commericacommodities.net> and <commericacommodities.org>, access a parking page with sponsored links. Complainant argues this use evidences that Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's COMERICA trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website. It is a well known practice to display on a webpage various links to other commercial websites, where every link activated by an Internet user enables the host of the search engine to collect financial compensation. It has been established that this practice constitutes bad faith use.
The fourth Domain Name, <commericacommodities.com>, accesses a holding page with the posted words "Coming Soon." Complainant contends that, consistent with prior UDRP cases, inactivity by Respondent in the form of a "coming soon" website may also amount to the Domain Name being used in bad faith. In particular, since Complainant's mark, COMERICA, is famous in the United States, it is not possible to conceive of any plausible use of this Domain Name or the other Domain Names by Respondent that would not infringe Complainant's intellectual property rights.
Complainant alleges that the circumstances surrounding Respondent's registration and use of the Domain Names indicate such registration and use was done for the specific purpose of trading on the name, reputation, and goodwill associated with Complainant and its COMERICA mark. The only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain, and that purpose is a violation of the Policy, as well as United States trademark law. Respondent's registration and use of the Domain Names evidences a clear intent to disrupt Complainant's business, deceive consumers, and trade off of Complainant's goodwill by creating an unauthorized association between the Domain Names and Complainant's COMERICA mark. Complainant further asserts that Respondent's registration and use of the Domain Names indicates a blatant attempt to misappropriate Complainant's well-established, famous mark.
Respondent did not submit a formal Response. However, Respondent did send several emails to the Center, which contained submissions made by Respondent that will be considered by the Panel and are summarized below.
Respondent states that the entire dispute is based on nothing but made-up assumptions by Complainant. Respondent urges that it did not register the Domain Names to be used in bad faith or to be linked in association with Complainant's COMERICA trademark. Respondent asserts that it is a legitimate company focused on international trade, with several deals that are currently being brokered and hundreds of emails to prove this, dating from the company's formation date in November 2013.
Respondent argues that Complainant presumptuously assumes that Respondent created a website to receive compensation derived from visits by Internet users, but this assertion is not based on any facts but instead Complainant has "ma[d]e it up from thin air." Respondent asserts that the website linked to the Domain Names is not operational and displays an "under construction" page because Respondent has not completed the site.
As to Complainant's assertion that Internet users might misspell the "Comerica" name by typing an additional "m", which could then lead them to visit Respondent's site, Respondent argues this would not happen because the Domain Names are comprised of the phrase "commericacommodities," not just "commerica". Respondent claims that its company name was intended to be "Commercia Commodities," because the word "Commercia" means "trade" in Latin. However, when Respondent set up the company via Legal Zoom, Respondent simply misspelled the name. Respondent states that it has recently changed the company name to The Rerum Group, with a new website located at "www.rerumgroup.com".
Finally, Respondent claims it is willing to resolve this dispute, but not by simply forfeiting the Domain Names without proper compensation. Respondent states that it paid for these Domain Names because they were shown to be available through Network Solutions. Respondent argues that if Complainant is willing to compensate Respondent for the process of changing its name, along with all associated fees, as well as pay for the Domain Names that Respondent rightfully registered, Respondent would agree to release them. Respondent asserts, "I don't believe in handing any company something that they did not pay for."
C. Complainant's Supplemental Filing
Complainant filed a supplemental submission on April 17, 2014. Complainant states that the Domains Names are now registered to The Rerum Group, consistent with Respondent's claim that it had changed its name to The Rerum Group, with a new website accessed by the domain name <rerumgroup.com>. Complainant contends that this new website supports Complainant's argument that the Domains Names are being used in bad faith. In particular, there is no indication that Respondent (or The Rerum Group) is commonly known by the Domain Names, or has made preparations to use them (or is using them) in connection with a bona fide offering of goods or services.
Complainant also asserts that it is irrelevant that Respondent allegedly misspelled its intended business name, "Commercia Commodities". Respondent, despite its claimed error, declined to transfer the Domains Names to Complainant without "compensation." Furthermore, Complainant asserts the Domain Names were registered in bad faith under the Policy. It is well-established under the Policy that a finding of bad faith may be made in cases where a registrant knew or should have known of the complainant's trademark prior to registering the domain name. In this case, the circumstances indicate that Respondent knew or should have known of the COMERICA mark, given the fame of Complainant's mark and the fact that both Complainant and Respondent are based in Texas.
Lastly, Complainant maintains its argument that the Domain Names were used in bad faith under the Policy. Complainant emphasizes that it is well-established under the Policy that a domain name is being used in bad faith if it resolves to a website with pay-per-click links, where every link activated by an Internet user enables the website owner to collect financial compensation proportional to the number of connections. In this case, three of the Domain Names have been used to access parking pages with links, while the fourth Domain Name accessed a holding page with the words "Coming Soon." Even if the parking pages were not generated by Respondent, Respondent is responsible for how the Domain Names were used. As owner, Respondent is responsible for the content regardless of whether the owner or a third party profits from the placement of links on a website.
D. Respondent's Supplemental Filing
Respondent states that it has formed a new company, The Rerum Group, after receiving notice of this UDRP dispute. Respondent allegedly created the new company and the associated website at "www.rerumgroup.com" in order to resume normal business activities and maintain a "hostable" website in the event that the Domain Names would be "locked" as a result of this dispute. Respondent states that The Rerum Group website is hosted on the same server as that supporting the Domain Names, but the new company is a completely separate entity that carries no reference to the previous name, "Commerica Commodities", or to Complainant. Respondent rejects Complainant's claim that the Domain Names are now registered under The Rerum Group and states this can be verified with the registrar, Network Solutions.
Respondent further claims, in response to Complainant's allegations of bad faith, that changing its company name as a result of this dispute (and the possibility that its website would be locked and current business hindered) is evidence of good business practice in continuing to develop a new company focused on international trade. It also demonstrates that Respondent is unconcerned with the use of Complainant's name. Respondent urges that its website at "www.rerumgroup.com" now carries absolutely no reference to Complainant and cannot support a claim that the Domain Names are being used in bad faith. The only connection between the Domain Names and Respondent's website at "www.rerumgroup.com" is that they are both hosted by Network Solutions, but The Rerum Group is a separate company.
As to Complainant's contention that Respondent should have known of Complainant and its mark, Respondent asserts that this is a matter of opinion, not fact. Respondent urges that in comparison to some of the other top banks in the United States, Complainant has only 485 branches nationwide, which according to one source ranks 22nd on the list of banks when sorted by number of branches.
In addressing Complainant's claim that the Domain Names were linked to a pay-per-click website, Respondent re-emphasizes that this is a made-up assumption. According to Respondent, what Complainant is suggesting is that because Respondent had an under construction page (provided by Network Solutions) when the website was not completed, Respondent was receiving financial compensation from it. Respondent acknowledges that it is fully aware of the use of these pages as they were activated to serve as "Under Construction" pages and nothing else. Respondent emphasizes that Complainant has provided no evidence that these links enabled Respondent to collect any financial compensation.
Finally, Respondent claims again that it is a business owner that works in international trade. Respondent asserts it is willing to submit any number of samples of the over 2,000 emails either written to or by Respondent over the last six months. These emails would legitimize that Respondent is running a serious company focused on international trade and not receiving pay-per-click deposits. Respondent does not appreciate the lack of due diligence performed by Complainant in investigating this case. Respondent also argues that Complainant, making such baseless accusations, is not entitled to receive the Domain Names without paying compensation as Respondent previously described.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it owns trademark registrations in the United States for its COMERICA mark, which has been used for over 30 years and is well-known within the banking and financial services sector.
The Panel observes that the difference between Complainant's trademark, COMERICA, and each of the Domain Names is the addition of an extra "m" to the name "Comerica," plus the descriptive word "commodities." The Panel finds that the additional letter "m" to the word "commerica" in the Domain Names is insufficient to distinguish this term from Complainant's name and mark, COMERICA. Further, the Panel determines that the word "commodities" in the Domain Names is non-distinctive and insufficient to distinguish them from Complainant's well-known COMERICA mark, which is the dominant component in each Domain Name. Moreover, commodities are often traded in financial markets and thus this descriptive term does not diminish the likelihood of confusion given that Complainant provides financial services. If the additional descriptive word had been "bicycles", for example, the Panel might have decided differently on this point.
Each of the four Domain Names includes a particular generic Top-Level Domain suffix: ".com", ".biz", ".net" and ".org". It is generally accepted that the addition of the top-level suffix in the domain name (e.g., ".com") is to be disregarded under the confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
Accordingly, the Panel concludes that the Domain Names are confusingly similar to Complainant's COMERICA trademark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Names. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the policy.
In this case, Complainant has established a prima facie case. Complainant did not license or otherwise authorize Respondent to use the COMERICA mark in the Domain Names. Complainant has performed searches to confirm that Respondent does not own any trademark corresponding to the Domain Names. Complainant acknowledges that Respondent formed Commerica Commodities Group in November 2013; however, in March 2014, Complainant sent a cease and desist letter demanding that Respondent stop allegedly infringing Complainant's trademark rights by using this name for its company. Complainant has submitted evidence to show that three of the Domain Names, <commericacommodities.biz>, <commericacommodities.net> and <commericacommodities.org>, were linked to websites containing links to other sites offering goods and services of Complainant's competitors, while the fourth Domain Name, <commericacommodities.com>, accesses a holding page with the words "Coming Soon". On this showing, there is no indication that Respondent has acquired any rights or legitimate interests in respect of the Domain Names since their registration in November 2013.
In response, Respondent has not contended that it has any rights or legitimate interests in the Domain Names. Instead, Respondent claimed that the choice of the term "commericacommodities" was allegedly the result of a misspelling when Respondent established its company through Legal Zoom. Further, Respondent submits that it has changed its company name to The Rerum Group, with a new website using the domain name <rerumgroup.com>. Respondent emphasizes that the new site carries no reference to the previous name, Commerica Commodities Group, or to Complainant. Regarding the Domain Names, Respondent has urged that they were available to be registered through Network Solutions and Respondent does not want to release them without receiving compensation for the process of changing its name, along with all associated fees, as well as be paid for the Domain Names.
Under these circumstances, the Panel finds that Respondent has failed to show that is has any rights or legitimate interests in respect of the Domain Names. That Respondent has allegedly changed its name and registered a new domain name, <rerumgroup.com>, does not give rise to any rights or legitimate interests with respect to the Domain Names.
Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith.
Complainant claims that Respondent registered the Domain Names in bad faith because Respondent was trading on the name, reputation and goodwill associated with Complainant and its COMERICA trademark, or at the least, Respondent "knew or should have known" of Complainant and its COMERICA mark when it registered the Domain Names.
The term "commerica" is not a common dictionary or descriptive word. However, Respondent claims that it first chose the name "Commerica Commodities" based on a misspelling of its intended word, "commercia", when it registered the company Commerica Commodities Group LLC using Legal Zoom. The Panel is not in any position to evaluate whether this statement is true or false. Even if Respondent is to be believed concerning this misspelling, it then chose to keep this name and register the four Domain Names in November 2013 combining the term "commerica" with the word "commodities". By that time, Complainant's COMERICA mark had been in use for over 30 years, Complainant had invested millions of dollars in the promotion of the products and services identified by this mark, and the mark was wellknown. Moreover, Respondent is located in Texas where Complainant has its principal place of business and over 130 bank branches throughout the state. A Google search of the terms "commerica" or "comerica" produces an extensive listing of search results devoted almost exclusively to Complainant and its COMERICA brand and mark.
In view of the particular circumstances in this case, the Panel finds that it is highly probable that Respondent was aware of Complainant and its COMERICA mark when it registered the Domain Names. The Panel is of the view that Respondent knew or should have known of Complainant and its COMERICA mark when it registered the Domain Names, and Respondent was "willfully blind" in failing to carry out a few simple checks that would have avoided this conflict. Paragraph 2 of the UDRP is particularly apt here as it provides guidance to domain name registrants: "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
As for bad faith use, the Panel considers that two factors are relevant. First, three of the Domain Names were linked to webpages that provided sponsored links, including links to services in competition with Complainant. The Panel agrees with those UDRP panels that have found that a registrant cannot disclaim responsibility for the various links on a website linked to a disputed domain name where they are concerned either with the complainant or with the field of commercial activity in which the complainant is a major player. The Panel finds that Respondent is "ultimately responsible for the content of the website generated by domain sponsor's technology." Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.
Secondly, the Panel is aware that Respondent, even while allegedly changing its name to The Rerum Group, has demanded compensation in excess of its out-of-pocket costs for registration of the Domain Names. Respondent in its submissions repeats that it has demanded compensation from Complainant for the costs associated with the process of changing its name and all associated fees, as well as payment for the Domain Names. If, as Respondent has stated, the choice of its original name, which allegedly infringes on Complainant's trademark rights, was the result of a spelling mistake made by Respondent, there is no basis for demanding that Complainant provide compensation for the costs associated with changing its name. By demanding payment in excess of the out-of-pocket costs associated with registration of the Domain Names, Respondent's use is in bad faith.
The Panel finds that Complainant has satisfied the third element of the Policy.
For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <commericacommodities.biz>, <commericacommodities.com>, <commericacommodities.net> and <commericacommodities.org> be transferred to Complainant.
Christopher S. Gibson
Date: May 13, 2014