WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. ICS INC. / Whois Agent
Case No. D2014-0525
1. The Parties
Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman LLP, United States of America.
Respondent is ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Whois Agent of Kirkland, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <coamericapark.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2014, the Registrar transmitted by email to the Center its verification response 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 communication to Complainant on April 3, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 4, 2014.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 2, 2014.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 8, 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
The marks upon which the Complaint is based are COMERICA and COMERICA PARK. According to the documentary evidence and contentions submitted, Complainant owns a number of United States registrations for its marks, such as Registration No. 1,251,846 granted on September 30, 1983 for the service mark COMERICA to provide banking services and Registration No. 2,434,031 granted on March 6, 2001 for the service mark COMERICA PARK to provide stadium facilities for sport and recreation activities.
According to the documentary evidence and contentions submitted, Complainant is a financial company based in Dallas, Texas, also doing business in other states within the United States of America, which has signed a Naming Rights Agreement for a ball park known as "Comerica Park", located in Detroit, Michigan. Comerica Park has been the home of the Detroit Tigers baseball team since 2000.
The disputed domain name was registered on March 5, 2012.
5. Parties' Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant's marks COMERICA and COMERICA PARK because (i) the disputed domain name is nearly identical but for the addition of the letter "a", a common typo error made by consumers attempting to access a website of Complainant, and (ii) this addition is not sufficient to distinguish the disputed domain name from Complainant's marks.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Complainant did not authorize, license or permit Respondent to use the marks COMERICA or COMERICA PARK in the disputed domain name; (ii) at the time the Complaint was filed there was no evidence that Respondent was making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain as the disputed domain name was used to access a "click-through" webpage that displayed links to other webpages containing links to third-party websites, and (iii) a search conducted by Complainant on April 4, 2014 on the Internet using the Google search engine and the search terms "Coamerica" and "ICS Inc" showed no results indicating use of the disputed domain name in connection with a bona fide offering of goods or services.
Finally, Complainant contends that the disputed domain name has been registered and is being used in bad faith by Respondent because: (i) Respondent must have known of Complainant's right in the marks COMERICA and COMERICA PARK when registering the disputed domain name since those marks are widely known, (ii) when a disputed domain name contains a widely known mark that fact is by itself sufficient for a finding of bad faith, (iii) the disputed domain accesses a "click-through" webpage that displays links to other webpages containing links to third-party websites, and this use evidences that Respondent intentionally attempted to attract for commercial gain Internet users to Respondent's website or other on-line location by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location, or of a product or service on Respondent's website or location; (iv) Respondent ICS, Inc. has engaged in a practice of registering domain names that bear striking resemblance to famous trademarks and has been the Respondent in numerous UDRP cases where the panels have ordered transfer or cancellation of the domain names.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Status of Respondent
When the Complaint was filed, the disputed domain name was registered in the name of Whois Agent, which is a privacy protection service to enable "real" owners of domain names to conceal their identities. By the time the Center transmitted to Registrar a request for registrar verification in connection with the disputed domain names, the identity of the actual registrant was disclosed. Both the protection service and the actual registrant have been served with copies of the Complaint and neither has responded.
The Panel sees no reason to distinguish between the two. The practice of having more than one Respondent to a proceeding under the Policy where one is a protection service and the other is the beneficial party which was later disclosed by the registrar is well-recognized in UDRP cases, as it helps to inform interested parties. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9.
B. Effect of the Default
The consensus view is that Respondent's default does not automatically result in a decision in favor of Complainant and that Complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. WIPO Overview 2.0, paragraph 2.2. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.Therefore, asserted facts that are not unreasonable will be taken as true, and Respondent will be subject to the inferences that flow naturally from the information provided by Complainants. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
C. Identical or Confusingly Similar
The disputed domain name <coamericapark.com> incorporates Complainant's marks COMERICA and COMERICA PARK with the adittion of the letter "a" between "co" and "america". As a result, this is an example of confusing similarity brought about through typing errors easily made by an Internet user: rather than typing the word "comerica" to visit Complainant's website, an Internet user could easily type the word "coamerica" and be diverted to a different website.
A "typosquatting" case typically involves a slight variation in spelling from a registered trademark. The Panel takes into account previous UDRP decisions relating to the practice of "typosquatting" where such practice has consistently been regarded as creating domain names confusingly similar to the relevant mark. See, e.g., MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324; Breitling SA and Breitling USA Inc. v. Whois Privacy Protection Service, Inc. / Breitling USA, Inc., WIPO Case No. D2008-0302; ACCOR v. Brigit Klostermann, WIPO Case No.. D2005-0627; Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No.. D2004-0713; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.
Finally, the addition of the suffix ".com" is non-distinctive because it is required for the registration of the disputed domain name. See, e.g., RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.
Therefore, the Panel finds that the disputed domain name <coamericapark.com> is confusingly similar to Complainant's marks and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
D. Rights or Legitimate Interests
The Panel accepts Complainant's contention that Respondent has not been authorized, licensed or otherwise permitted by Complainant to use the marks COMERICA or COMERICA PARK, since such contention remains undisputed.
On May 20, 2014 an independent search was conducted by the Panel by accessing the website to which the disputed domain name resolves. The Panel found that the disputed domain accesses a "click-through" webpage that displays links to other webpages containing links to third-party websites.
The Panel concurs with the prior UDRP decisions finding that in certain circumstances, there is no bona fide offering of goods or services where the disputed domain name resolves to a website with sponsored links.See ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649. As decided in Gene Kelly Image Trust v. BWI Domain Manager, WIPO Case No. D2008-0342, "[t]he existence of sponsored links on the website also clearly demonstrates that the Respondent is not using the disputed domain name as a legitimate non-commercial fan site. On the contrary, it appears plain that the Respondent is using the disputed domain name to make a commercial gain."
Therefore, the Panel is convinced that Complainant has done enough to establish a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent's rights to or legitimate interests therein. In addition, none of the three nonexclusive methods for the panel to conclude that Respondent has rights or a legitimate interest in the disputed domain name (paragraph 4(c) of the Policy) shows a result in favor of Respondent.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
E. Registered and Used in Bad Faith
The Panel concurs with previous UDRP decisions finding that registration of a well-known trademark as a domain name may be an indication of bad faith in itself. See Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainant's mark COMERICA and COMERICA PARK when Respondent registered the disputed domain name. In fact, the Panel sees no plausible explanation for Respondent's adoption of the term "coamericapark" in the disputed domain name other than to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant's marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847.
The disputed domain name has been used to resolve to a "click-through" webpage that displays links to other webpages containing links to third-party websites. Paragraph 4c(iv) of the Policy provides that if, by using the domain name Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 your website or location or of a product or service on your website or location, that circumstance shall be evidence of registration and the use of a domain name in bad faith.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was registered and was and still is being used in bad faith.
Complainant also contends that Respondent has shown a pattern of bad faith conduct by having registered other companies' trademarks and being engaged in several UDRP proceedings as a result of such conduct. The Panel conducted an independent survey on May 20, 2014 and verified that ICS Inc. is a Respondent in a great number of UDRP cases where transfer of the disputed domain name has been ordered. Therefore, the Panel finds that Respondent has shown a pattern of bad faith conduct.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <coamericapark.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Date: May 21, 2014