WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Host Master, Transure Enterprise Ltd / Above.com Domain Privacy
Case No. D2014-0735
1. The Parties
The Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
The Respondent is Host Master, Transure Enterprise Ltd of Tortol, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Above.com Domain Privacy, Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <comericabamk.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2014. On May 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 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 the Complainant on May 9, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 12, 2014.
The Center verified that the Complaint together with the amendment to the Complaint/amended 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 May 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2014.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on June 24, 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 Complainant is a financial services company, with headquarters in Dallas Texas, United States.
The Complainant has branches in Arizona, Florida, California and Michigan, United States. The bank also operates in Canada and Mexico.
The Complainant is the holder of trademarks COMERICA and COMERICA BANK in the United States.
The Complainant is the owner of the following domain name registrations <comercia.com>, <comerica.net> and <comericabank.com> amongst others mentioned in its complaint.
The disputed domain name was registered on February 9, 2012. At the time of filing of the Complaint, the disputed domain name resolved to a website displaying several pay-per-click links, mainly related to the banking and finance sectors.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is confusingly similar to their trademark because it fully incorporates the COMERICA marks, and the misspelling is not enough to avoid such confusion. It further adds that the misspelling of the “n” for the “m” is a typical mistake given the fact that the letters are situated one next to the other on a keyboard.
The Complainant asserts that the Respondent lacks rights or legitimate interest in the disputed domain name since Respondent has never been commonly known by the COMERICA Marks or any variations thereof. Furthermore, the Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the COMERICA Marks.
The Complainant further asserts that the Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name since it is using alternatively the website as a pay-per-click website containing links to third-party websites offering financial services that compete directly with Complainant, and at other times to a site where a credit check is offered to Comerica visitors, the above to deceive consumers and tarnish Complainant’s reputation.
The Complainant finally considers that the Respondent registered the disputed domain name simply to trade off of the substantial reputation and goodwill of Complainant’s COMERICA Marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the disputed domain name registered by the Respondent 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.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
1. The Panel finds that the Complainant has established that it is the exclusive owner of the registered trademarks COMERICA and COMERICA BANK based on the evidence provided by the Complainant (Annex 6, 7, 8, 9 and 10 to the Complaint).
2. The disputed domain name consists of the expression “Comerica” and “Bamk”. The Panel considers that the mention “BAMK”, especially when added to a famous trademark is not sufficient to grant distinctiveness or to avoid confusion. Furthermore, the addition of the term “Bamk”, does not grant the disputed domain name distinctiveness it merely gives the impression of a typo mistake of the word “bank”, which simply amounts to further confusion to the public consumer.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the disputed domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden of production is shifted to the Respondent to prove the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name “Comerica” or “Comerica Bank”. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark COMERICA. There is no current relationship between the Complainant and the Respondent.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.
In the absence of a Response this Administrative Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrates that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a nonexhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is composed of the words, “comerica” and bamk”. It is understood that when proceeding to the registration of a domain name, paragraph 2 of the Policy implicitly requires a good faith effort to avoid registering and using domain names corresponding to third-party trademarks. The onus is on the respondent to make the appropriate enquiries to ensure that the registration of the domain name does not infringe or violate third party rights.
Therefore, in this particular case one could presume that the Respondent registered the disputed domain name with no exploration whatsoever of the possibility of third-party rights, and with apparent disregard to whether the domain name it was registering was a domain name which corresponded to the distinctive trademark of another.
However, it is rather impossible to conclude any good faith efforts on behalf of the Respondent because it is difficult to believe that the Respondent came up with the same union of random words as did the Complainant. This fact on its own is enough to conclude bad faith registration; however, the disputed domain name not only incorporates the registered trademark of the Complainant but indicates the mention “bamk”, a typo mistake too close and too obvious to conclude that the Respondent had no knowledge of the services rendered under the COMERICA trademark.
Furthermore, it cannot be a simple coincidence that the disputed domain name, when accessed made reference to online banking accounts, bank account loans, Bank America rates, and other bank related topics. It is clear that the Respondent had knowledge of the services rendered under the COMERICA trademark.
The Panel therefore considers that Respondent’s objective by registering the disputed domain name <comericabamk.com> was precisely to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.
The Panel considers that the disputed domain name as a whole can only create a likelihood of confusion with the Complainants trademarks.
Consequently, the Panel considers that by registering a domain name corresponding to a well known trademark, the Respondent has intentionally tried to divert Internet user’s to its webpage particularly to generate revenue, as the Panel when observing the Respondent’s website concludes that it is a pay-per-click site. In the circumstances of this case, this behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what Internet users are looking for.
Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of 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 <comericabamk.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Date: June 30, 2014