WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Klout Webb
Case No. D2014-1041
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 Klout Webb of New York, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <cmoerica.com> ("Domain Name No. 1") and <comeriva.com> ("Domain Name No 2"; together, the "Domain Names") are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 17, 2014. On June 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 19, 2014, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing his 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 25, 2014. On July 7, 2014, the Center wrote to the Registrar (copying the parties), noting that the Domain Names were set to expire on July 25, 2014, and requested, pursuant to paragraph 22.214.171.124 of the ICANN Expired Domain Deletion Policy, (i) confirmation that the Registrar would place the Domain Names on "lock" until the resolution of the present UDRP proceeding, and (ii) information on whether any action would be required of the parties to keep the Domain Names on "lock". The Registrar provided its response on July 8, 2014, and, on July 9, 2014, the Registrar wrote to the parties and encouraged them to contact the Registrar directly in relation to resolving the issue of renewing registration of the Domain Names to ensure that they remained active, pending resolution of the present dispute. On July 14, 2014, the Center transmitted by email confirmation that the Domain Names had been renewed by the Complainant.
In accordance with the paragraph 5(a) of the Rules, the due date for the Respondent's Response was July 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent's default on July 16, 2014.
The Center appointed D. Brian King as the sole panelist in this matter on August 4, 2014. The Panel finds that it was properly constituted. The sole panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
A. The parties
The Complainant is a financial services company with bank locations in Arizona, California, Florida and Michigan, United States, in addition to "select businesses operating in several other states, as well as in Canada and Mexico". As of December 31, 2013, the Complainant had total assets of USD65.4 billion and was among the forty largest American holding companies Annex 4 to the Complaint).
The Panel has no information about the business activities of the Respondent. The address provided to the Registrar by the Respondent when it registered the Domain Names does not appear to be a valid address. Service of the Written Notice from the Center to this address via DHL shipping on June 25, 2014 was not successful (as confirmed by tracking and WIPO correspondence included in the case file), and an Internet search for the address by the Complainant on June 17, 2014 did not yield any results (Annex 10 to the Complaint).
B. The marks
The Complaint is the registered owner of the following marks involving the word "comerica" (together, the "Marks"):
- a service mark for the word "comerica", registered in 1982 for use in banking services,
- a service mark and accompanying design embodying the word "comerica", registered in 1992 for use in banking services, and
- thirty-five additional registered or pending marks comprising, in whole or in part, the word "comerica".
The Complainant invests substantial sums of money every year to promote its products and services, which are identified by its Marks. Furthermore, the Complainant is also the registrant of numerous domain names embodying its Marks, including <comerica.com>, <comerica.net> and <comerica.org>.
C. Domain Names
Both of the Domain Names were registered by the Respondent on July 25, 2013. A screen shot dated April 24, 2014 of the webpage at Domain Name No. 1 shows lists of links and "Sponsored Listings" to other webpages, with most titles reflecting subjects typically associated with banks and financial services companies-for example, cash loans and credit scores (Annex 9 to the Complaint). A screen shot of the webpage at Domain Name No. 2 from the same date also shows lists of links and "Sponsored Listings", the titles of which also mostly relate to banking and financial services such as loans and mortgages. Screen shots dated June 17, 2014 of the webpages at both Domain Names show the following text: "Bad Request: You are missing the encoded url in the parameter" (Annex 11). When accessed by the Panel on August 8, 2014, both webpages were unchanged from their June 17, 2014 appearance.
5. Parties' Contentions
The grounds set out in the Complaint can be summarized as follows.
The Complainant claims that the Domain Names are identical or confusingly similar to its Marks. It submits that the Domain Names are examples of "typosquatting", i.e., capitalizing on the near-identity between the Domain Names and its Marks embodying the word"comerica". The Complainant states that the links previously appearing on the webpages at the Domain Names resulted in additional confusion, because they referred Internet users to sites offering financial services similar to those provided by the Complainant. The Complainant relies on a previous UDRP dispute in which the panel found that confusion resulted where users were directed to competing financial services providers.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant asserts that it has not licensed its Marks to the Respondent. The Complainant further submits that there is no evidence of the Respondent using the Domain Names in connection with a bona fide offering of goods or services. It contends that there is also no evidence that the Respondent is commonly known by a name corresponding to the Domain Names. In the circumstances, the Complainant argues that the Respondent does not own and cannot lawfully obtain trademark or intellectual property rights to the Marks.
The Complainant claims that the Domain Names were registered and used in bad faith. Given that the Marks are well known, the Complainant states that the Respondent must have known of the Complainant's rights in the mark COMERICA when registering the Domain Names. The Complainant contends that the Domain Names were used in bad faith, because the April 24, 2014 screen shots indicate that the Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's webpages. The Complainant asserts that the screenshots dated June 2014 of the underlying webpages-showing a failure to carry any content whatsoever—also indicate bad faith by the Respondent.
The Complainant requests that the Domain Names be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above. Paragraph 4(b)(iv) provides that the following, in particular, will be evidence of the registration and use of a domain name in bad faith:
By using the domain name, the Respondent has 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 your web site or location or of a product or service on your web site or location.
Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent's rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has provided evidence demonstrating it has rights in multiple marks using the word "comerica" (See Annexes 6, 7, 8 to the Complaint). Each of the Domain Names will be considered in turn to determine if they are confusingly similar to the Complainant's registered Marks.
Domain Name No. 1 (<cmoerica.com>) is identical to the Complainant's Marks (COMERICA) except that two letters are transposed: 'o' and 'm'. This is a classic instance of "typosquatting"—the practice of exploiting a mark by creating a domain name with insignificant typographical differences. Previous panels constituted under the Policy have held that a domain name that is identical to another's mark but for a minor misspelling will typically satisfy the "confusingly similar" requirement of the Policy (See, e.g.,Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161). As noted by the Complainant, UDRP panels have held that a respondent has engaged in "typosquatting" where the only difference between the domain name in dispute and the complainant's registered trademark is two transposed letters (See, e.g., PartyGaming Plc v. WHOis Privacy Protection Services, Inc./Henao Berenice, WIPO Case No. D2006-0508). Furthermore, the likelihood that the transposition of these two letters could be easily reproduced through typing errors—here, by accidentally hitting the 'm' key before the 'o' key-is indicative of "typosquatting" (See Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043). On these grounds, the Panel concludes that Domain Name No. 1 is confusingly similar to the Complainant's Marks.
Domain Name No. 2 (<comeriva.com>) is identical to the Complainant's Marks ("comerica") except that the last second letter 'c' is replaced with a 'v'; notably, those two letters are adjacent to each other on a standard QWERTY keyboard. This is again an example of "typosquatting": a simple typographical error would result in an Internet user reaching the Respondent's website despite intending to reach the Complainant's. Previous UDRP panels have similarly found domain names to be confusingly similar where the differentiating letters lay next to each other on a standard western keyboard (See, e.g., bwin.party services (Austria) GmbH v. Interagentur AG, WIPO Case No. D2011-1079). On these grounds, the Panel concludes that Domain Name No. Two is confusingly similar to the Complainant's.
Accordingly, the first element of the test under paragraph 4(a) of the Policy is met for both of the Domain Names.
B. Rights or Legitimate Interests
Many UDRP panels have found that complainants only need to establish a prima facie case in relation to the second element of the test under paragraph 4 of the Policy (See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576). Once a prima facie showing is made, the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. The Panel agrees that the Complainant need only make out a prima facie case.
The Respondent here has not filed a response; the Complainant's claims and contentions therefore remain unchallenged. In the absence of any contrary evidence, the Panel accepts the Complainant's representations that it has given no authorization to the Respondent to use its Marks and has no commercial or other relationship with the Respondent. The Panel also notes the Respondent's lack of action in face of the impending expiration of the Domain Names' registrations. Based on the record, it appears that only the Complainant made an effort to ensure that the Domain Names remained active. If the Respondent believed that it had rights or legitimate interests in the Domain Names, then the Panel would have expected it to have made an effort to ensure that the Domain Names remained active; its inaction leads the Panel to infer that the Respondent likely has none.
With respect to paragraph 4(c) of the Policy (referred to above), the Panel finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Names, or that the Respondent is using or preparing to use the Domain Names in connection with a bona fide offering of goods or services. The webpages at these Domain Names appeared as of April 2014 to do no more than redirect Internet users to "Related Links" and "Sponsored Listings", which the Complainant submits are so-called "pay-per-click" sites–i.e., links that would generate revenue for the Respondent based on user traffic directed to those other sites–rather than any genuine offering by the Respondent to provide services. Previous UDRP panels have found that the use of a domain name with an intention of deriving advantage from user confusion or diversion of users to other commercial sites does not constitute rights or legitimate interests on the part of the respondent see, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393).
On these grounds, the Panel finds that the Complainant has, at minimum, made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Names, and observes that the Respondent has failed to make any submissions that would demonstrate such rights or legitimate interests. Accordingly, the Panel finds that the Complainant has satisfied the requirements of the second element of the test under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Numerous UDRP panels have found that typosquatting itself constitutes bad faith (See, e.g, bwin.party services (Austria) GmbH v. Interagentur AG, WIPO Case No. D2011-1079; Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568; Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423;Briefing.com Inc v. Cost Net Domain Manager, WIPO Case No. D2001-0970). The two Domain Names are clear cases of "typosquatting" for the reasons already identified above. The Panel finds here that the Respondent's "typosquatting" constitutes registration in bad faith.
The Domain Names have also been used in bad faith. Paragraph 4(b)(iv) of the Policy specifies that bad faith is present where a respondent intentionally uses a domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark. It appears from the screenshots of the underlying webpages dated April 24, 2014 (described above in Section 4c) that the Respondent used the Domain Names in precisely this manner. The fact that the Respondent had registered not one but two domain names that, in distinct ways, are confusingly similar to the Complainant's Marks, and posted links to services related to those provided by the Complainant on both, supports the conclusion that registration and use of the Domain Names was in bad faith.
The fact that the Domain Names appear at present to be defunct makes no difference to the outcome. The Respondent has registered and actively used the Domain Names in bad faith, and absent the granting of relief to the Complainant, nothing would prevent the Respondent from doing so again. Further, the present circumstances constitute, at best, "passive holding" of the Domain Names. Many UDRP panels have held that the "passive holding" of a domain name can constitute bad faith in light of the overall circumstances of the case (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Here, the finding that the Respondent engaged in typosquatting is sufficient to satisfy the requirement of bad faith use, even if it was only "passive holding" that was at issue.
Accordingly, the Panel finds that the Complainant has satisfied the requirement of the third element of the test under paragraph 4(a) 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 Domain Names <cmoerica.com> and <comeriva.com> be transferred to the Complainant.
D. Brian King
Date: August 18, 2014