WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. RespectedResponse.org, Respected Responsse
Case No. D2014-1035
1. The Parties
Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
Respondent is RespectedResponse.org, Respected Responsse of Cheyenne, Wyoming, United States of America.
2. The Domain Name and Registrar
The disputed domain name <comarica.com> is registered with BigRock Solutions Pvt Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 17, 2014. On June 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 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.
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 the Respondent of the Complaint, and the proceedings commenced on June 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 10, 2014.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 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
Complainant is a large financial services company. It is the thirty-sixth (36) largest holding company in the United States of America with USD 65.4 billion in assets, as of December 31, 2013. Complainant has rights to thirty-seven (37) active trademarks registered with the United States Patent and Trademark Office. This includes a plain version of COMERICA (US Reg. No. 1251846), which was registered September 20, 1983, and a designed version of COMERICA (US Reg. No. 1776041), which was registered June 8, 1993. Complainant is the registrant for the domain names <comerica.com>, <comerica.net>, and <comerica.org>.
Respondent registered the disputed domain name, <comarica.com>, on November 26, 2005. Respondent has sponsored links on the attached webpage. These links are for, e.g., banking jobs, credit checks, incorporation filings, long-term investments, and loans.
5. Parties' Contentions
First, Complainant contends that it has the exclusive rights to the COMERICA mark, asserting that the mark is famous under United States of America federal and state law. It further asserts that the COMERICA mark has been used prolifically in the more than twenty years preceding Respondent's registration of the disputed domain name. Complainant contends that the disputed domain name, <comarica.com>, is confusingly similar and virtually identical to its COMERICA mark and registered domain name, <comerica.com>. The only difference is the use of an "a" by Respondent where Complainant uses an "e." Complainant alleges that this would be a common typographical error made by consumers attempting to access Complainant's website and is not enough to distinguish the disputed domain name from Complainant's mark.
Second, Complainant alleges that there is no indication that the Respondent has rights or legitimate interests in the disputed domain name. Complainant asserts that it has not licensed or otherwise permitted Respondent to make use of Complainant's mark or the disputed domain name. Complainant further asserts that before it notified Respondent of the dispute, there was no evidence that Respondent had made a bona fide use of the disputed domain name. There was no evidence either, according to Complainant, that Respondent had made any demonstrable preparations for such a bona fide use. Complainant alleges that there is no evidence that the Respondent has ever been commonly known by a name corresponding to the disputed domain name or any portion thereof. Complainant alleges that Respondent does not own and could not lawfully obtain any trademark or intellectual property that is confusingly similar to Complainant's mark.
Third, Complainant alleges that the disputed domain name was registered in bad faith by Respondent. Respondent, allegedly, must have known of the Complainant's rights in its mark when it registered the disputed domain name. Complainant establishes this allegation on several observations. First, Complainant had registered the COMERICA trademark twenty years before Respondent registered the disputed domain name. Second, Complainant argues that its trademark is famous, that it is widely used and that it had been used for a long period of time prior to Respondent's registration of the disputed domain name.
On this basis, Complainant alleges that Respondent uses the disputed domain name to attract Internet consumers based on its high similarity with Complainant's trademark and likelihood to confuse Internet users. This confusion, Complainant alleges, could manifest as uncertainty as to the source, sponsorship, affiliation, or endorsement of Respondent's website or sponsored links therein. Respondent would benefit, Complainant alleges, from this increased – or rerouted – Internet traffic because its financial compensation from those links is likely proportional to the number of connections made through them. Even if this is not the case here, Complainant argues that UDRP panels have found that domain name registrants are normally deemed responsible for content appearing on their website.
As a result of the foregoing, Complainant alleges that Respondent's registration of the disputed domain name and Respondent's subsequent use of it to direct Internet traffic to its website were in bad faith because they evidence a clear intent to disrupt Complainant's business, deceive consumers and trade off of Complainant's goodwill by creating an unauthorized association between the disputed domain name and Complainant's mark.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element under paragraph 4(a) requires Complainant to establish that the disputed domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights. Maree Gaye Miller v. Peter Horner, WIPO Case No. D2008-1492.
Complainant provides sufficient evidence that it is the owner of the COMERICA Mark. In addition to Complainant's trademark for COMERICA, first registered September 20, 1983, Complainant has operated and advertised under this name for over twenty years and is the registrant of several identical domain names, including <comerica.com>, <comerica.net>, and <comerica.org>. Complainant further demonstrated that its mark is famous and widely-used. From this evidence, the Panel is convinced that Complainant has demonstrated that it had rights in the COMERICA mark at the time the disputed domain name was registered on November 26, 2005.
The disputed domain name consists of only two elements: (1) the term "comarica"; and (2) the suffix ".com." It is well-established that this latter element – the Top-Level Domain (".com") – should be disregarded for the purposes of determining the similarity of Complainant's trademark and the disputed domain name. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029. The only difference then remaining between Complainant's mark and the disputed domain name is the fourth letter, which is an "e" in the first and an "a" in the latter.
It is well-established that this sort of minor typographical difference is insufficient to meaningfully distinguish the two. In Network Solutions, the panel found that the substitution of the letter "s" with the letter "z" could not distinguish the contested domain name from the asserted trademark. Network Solutions, LLC v. NetworkSolutionz, WIPO Case No. D2005-0450. And, the panel there stated, "a mere replacement of a single letter with another one phonetically equivalent is too tenuous and insubstantial to detract from this conclusion." Id. In Encyclopaedia Britannica, the domain name term "encyclopedia" was insufficiently different from the trademark term "encyclopaedia" for the two to be distinguished. Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330. Likewise, in Oxygen Media, the substitution of a zero with the letter "o" could not distinguish the contested domain name from the asserted trademark. Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362.
For the foregoing reasons, this Panel finds that the disputed domain name is confusingly similar to Complainant's COMERICA mark, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires Complainant to present – at a minimum – a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Maree Gaye Miller v. Peter Horner, WIPO Case No. D2008-1492. "Once the Complainant has made a prima facie case, the burden shifts to the Respondent to refute the Complainant's averments and to show that it has rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy." Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393.
Complainant has alleged that Respondent has no rights or legitimate interests to the disputed domain name, and has put forward all the evidence that could reasonably be expected, considering such evidence is peculiarly within the knowledge of the Respondent. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. Complainant has asserted that it has never licensed or otherwise permitted Respondent to make use of Complainant's mark or the disputed domain name. And, based on an assessment of the evidence on record, the Panel finds there is no indication that Respondent has been commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of goods or services. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. For this reason, Complainant has established a prima facie case that Respondent must now refute.
As Respondent has not filed a response, Complainant's assertions remain unchallenged and its prima facie case still stands. Complainant has, thus, satisfied paragraph 4(a)(ii) of the Policy. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and used in bad faith by the Respondent. Maree Gaye Miller v. Peter Horner, WIPO Case No. D2008-1492. The Policy states, in paragraph 4(b)(iv), that bad faith exists where the Respondent "intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location."
Complainant had registered its trademarks in COMERICA more than ten years before Respondent registered the disputed domain name. Complainant demonstrated, and Respondent did not dispute, that, at that time, Complainant's trademark was well-known and widely used in commerce for the previous twenty years. For these reasons, Respondent likely knew of Complainant and its COMERICA trademark when it registered the disputed domain name. Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763 ("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"); SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
In light of this knowledge and the very slight variation between the disputed domain name and Complainant's trademark, the Panel finds that Respondent engaged in typosquatting. Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069. "Furthermore, it is well-settled that the practice of typo squatting, in and of itself, can be seen as an indication of the bad faith registration of a domain name." ALK-Abelló A/S v. Manila Industries Inc., WIPO Case No. D2006-1033.
Complainant has demonstrated that Respondent registered the disputed domain name with the intent of directing traffic away from Complainant's webpage and to Respondent's webpage for the purpose of commercial gain. The disputed domain name accesses a parking page with sponsored links to other financial service institutions, for which Respondent is ultimately responsible. Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396. This dispute is similar to that in Comerica Incorporated v. ICS INC. / Whois Privacy Protection Service, Inc., WIPO Case No. D2013-0934 (finding that Respondent registered and used the disputed domain name in bad faith when it simply added an "8" at the end of the <comerica.com> domain name and used it to direct users to a parking page).
The information provided by Complainant suggests bad faith in the acquisition and use of the disputed domain name. Respondent has done nothing to supplant that suggestion.
The Panel is satisfied that Complainant has met 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 <comarica.com> be transferred to Complainant.
Michael A. Albert
Date: August 7, 2014