WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Tomasz Szczesniak
Case No. D2014-0865
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 Tomasz Szczesniak, of Warsaw, Poland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <comerica-web-banking.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2014. On May 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the language of the registration agreement for the disputed domain name is Polish, the Complainant filed an email with arguments as to why the proceeding should be in English on June 5, 2014. A further email was received from the Complainant on this issue on June 16, 2014.
The Center verified that the Complaint with the request that English be the language of the proceedings 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 June 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2014. The Response was filed with the Center on July 5, 2014.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on July 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.
4. Factual Background
The Complainant is a financial services company headquartered in Dallas, Texas, United States. In addition to Texas, the Complainant has bank locations in Arizona, California, Florida, and Michigan, United States as well as in Canada and Mexico. The Complainant is the owner of many trademarks and service marks in the United States (together "the Marks"), including:
- COMERICA, a service mark, Registration No. 1,251,846 for use in "banking services", registered on September 20, 1983, with first use in commerce on February 26, 1982.
- COMERICA, a service mark and Design, Registration No. 1,776,041 for use in "banking services", registered on June 8, 1993, with first use in commerce on June 18, 1992.
In addition, the Complainant is the owner of the service mark COMERICA WEB BANKING, United States Trademark Regis tration No. 3,950,474, registered on April 26, 2011.
The Complainant is also the registrant of, among others, the domain names <comerica.com>, <comerica.net>, <comerica.org> and <webbanking.comerica.com>, the latter being the Complainant's official log-in page for web banking.
The disputed domain name <comerica-web-banking.com> was created on May 4, 2012 and resolves to a website purportedly providing information about the Complainant's web banking services and displaying sponsored links to the Complainant's competitors.
5. Parties' Contentions
(i) The Complainant submits that the disputed domain name reproduces the Marks in which the Complainant has rights, and is confusingly similar to the Marks insofar as the disputed domain name, <comerica-web-banking.com>, contains the distinctive element COMERICA in its entirety. The Complainant also asserts that the addition of the non-distinctive words "web" and "banking" does not serve to distinguish the disputed domain name <comerica-web-banking.com> from the Marks and only adds to the confusion.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never licensed or in any way authorized the Respondent to register or use the Marks in any manner. The Complainant also asserts that the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant alleges that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but instead is using the disputed domain name in connection with a website that displays sponsored links.
(iv) The Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert consumers for commercial gain. Furthermore, the Complainant submits that the Respondent acted in bad faith because the Marks being well-known, it knew or should have known about the Complainant's rights in and to the Marks when registering the disputed domain name.
(v) Finally, the Complainant contends that the Respondent acted in bad faith because the Respondent's registration and use of the disputed domain name obviously has no other intention than to misappropriate or tarnish the Complainant's Marks.
(vi) The Complainant requests that the disputed domain name be transferred to the Complainant.
On July 5, 2014, the Respondent sent a response to the Center, consenting to the remedy requested by the Complainant, and contending that because he did not renew the registration of the disputed domain name on May 3, 2014 with the "Aftermarket.pl" service, he is no longer the holder of the disputed domain name and is unable to transfer it by himself.
6. Discussion and Findings
A. Procedural Aspects
(i) Language of the Proceeding
Paragraph 11(a) of the Rules provides that "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
The Registrar confirmed that the language of the registration agreement of the disputed domain name is Polish.
The Complainant specifically requested in its emails to the Center on June 5 and 16, 2014 that the proceeding takes place in the English language under paragraph 11(a) of the Rules, quoting several UDRP panel decisions which held that in deciding to use a language other than that of the registration agreement, panels may exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs. See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004, and Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
Considering the request of the Complainant, as well as the fact that the website to which the disputed domain name resolves appears entirely in the English language and that no detriment or burden shall be created for the Respondent since his Response is in the English language, the Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English.
(ii) Failure to rebut and consent to the requested remedy
Under paragraph 4(a) of the Policy, it is the Complainant's burden to establish that all three of the required criteria for a transfer or cancellation of the disputed domain name have been met.
In this case, the Panel finds that in his Response, the Respondent failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, by expressly consenting to the remedy requested by the Complainant, without objecting to the Complainant's arguments that the Respondent has acted in bad faith, an inference may be drawn that such arguments are accepted by the Respondent.
B. Requirements of Paragraph 4(a) of the Policy
(i) Identical or Confusingly Similar
In comparing the Marks with the disputed domain name <comerica-web-banking.com>, it is evident that the latter consists solely of the Marks, followed by the descriptive words "web" and "banking".
The addition of generic or descriptive terms does not serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
The Panel finds that the disputed domain name <comerica-web-banking.com> is confusingly similar to the Marks, which it incorporates in their entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain name displays a number of sponsored links to various websites unrelated to the Complainant.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name. The "About Us" section of the website to which the disputed domain name resolves, merely states that "The website is not connected or related to Comerica Bank in any way".
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name; (ii) has no connection with or authorization from the Complainant; and (iii) is not commonly known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
(iii) Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant's arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Marks.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
As also recognized in Comerica Bank v. Rodica Ilea, WIPO Case No. D2013-1861 and in Comerica Bank v. Host Master, Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2014-0735, the Panel considers the Marks to be well known.
Thus, it is highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Marks. See Barney's Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Where the Respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also demonstrate bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
The Complainant has also argued and provided evidence that the Respondent is not making a bona fide use of the disputed domain name, and that the disputed domain name is used to divert Internet users for commercial gain.
The Panel notes that the website to which the disputed domain name resolves is likely to have directly or indirectly generated revenue for the Respondent or whoever is responsible for the uploading of third party links. The fact that it might not be the Respondent who has derived the gain is irrelevant. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
Moreover, despite the Respondent's contention that the Registrar's reseller "Aftermaket.pl" considers the Respondent's registration of the disputed domain name as expired, the Respondent has been confirmed by the Registrar as the registered holder of the disputed domain name (the Registrar furthermore confirmed that the disputed domain name expires on May 4, 2015), and it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; and Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
Finally, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel finds that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes in these circumstances that the Respondent's registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <comerica-web-banking.com> be transferred to the Complainant.
Date: August 5, 2014