WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Rob Patel / Domain Admin, Privacy Protection Service Inc d/b/a PrivacyProtect.org
Case No. D2014-1207
1. The Parties
The Complainant is Comerica Bank, Dallas, Texas, United States of America (USA), represented by Bodman LLP, USA.
The Respondent is Rob Patel of Mumbai, Kerala, India / Domain Admin, Privacy Protection Service Inc d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <comrica.com> is registered with RegisterMatrix.com a/k/a Media Elite Holdings Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2014. On July 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 July 23, 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 July 24, 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 the Respondent of the Complaint, and the proceedings commenced on July 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 28, 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
According to the Complainant, it is a financial services company having bank or other business locations in the USA, Canada and Mexico. An indication of the scale of the Complainant’s business is that it had over USD65 billion in assets as at the end of 2013.
The Complainant holds some 40 trademarks comprising or embodying the word “comerica” registered or pending at the U.S. Patent and Trademark Office (USPTO), of which the following are representative:
COMERICA, USPTO principal register, registration number 1,251,846, registered September 20, 1983, international class 36;
COMERICA (and design), USPTO principal register, registration number 1,776,041, registered June 8, 1993, international class 36.
The Complainant also owns domain names including <comerica.com>, <comerica.net> and <comerica.org>.
Nothing is known about the Respondent except for such details as were submitted to the Registrar in order to register the disputed domain name, which is recorded in the WhoIs as having been created on July 28, 2004.
5. Parties’ Contentions
The Complainant has produced copies of USPTO online registration documents in evidence of its ownership of the trademarks numbered 1,251,846 and 1,776,041 as detailed in section 4 above.
The Complainant contends that the trademark COMERICA is a coined word that is distinctive, powerful and symbolizes the goodwill of the Complainant. The Complainant says that it invests millions of dollars annually in promotion under the trademark and that the trademark is famous under United States federal and state trademark laws.
The Complainant contends that the disputed domain name <comrica.com> is identical or confusingly similar to the trademark COMERICA except for the omission of the letter “e”, which would be a common typographical mistake.
The Complainant further contends that the Respondent does not have any rights or legitimate interest in the disputed domain name and that the Complainant has not permitted the Respondent to use the trademark. The Complainant states there is no evidence of the Respondent’s demonstrable preparations to use the disputed domain name or a similar name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the disputed domain name. The Complainant says there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent to derive commercial gain.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith and that it resolves to a parking page with links promoting financial services similar to the Complainant’s. The Complainant submits that the Respondent’s registration of a disputed domain name so similar to the Complainant’s well-known trademark, of which the Respondent should have been aware, should be sufficient for a finding of bad faith.
The Complainant says that the disputed domain name resolves to a parking page containing links, and was doing so in 2011. The Respondent has attempted to attract Internet users by creating a confusing impression that the Respondent’s website may have the Complainant’s endorsement. It is submitted that this was done for commercial gain because well-known practice is for a website to display links to other commercial websites for the purpose of collecting commission when such links are followed. It is further submitted that bad faith exists irrespective of whether the commercial gain accrues to the benefit the Respondent or to third parties such as the parking service or the advertising service.
The Complainant says that in 2004 the disputed domain name was used to promote an Internet service provider named NetZero and that in consequence Internet users would plausibly have assumed that the content of the website had the endorsement of the Complainant.
The Complainant has cited certain previous decisions under the UDRP that it wishes the Panel to consider as being relevant.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel in this case is satisfied that the Center has fulfilled its obligations to attempt to contact the Respondent in service of the Complaint in accordance with paragraph 2 of the Rules.
A. Identical or Confusingly Similar
The disputed domain name is <comrica.com>. The generic Top-Level Domain (gTLD) designation of the disputed domain name may generally be disregarded in the consideration of confusing similarity under the Policy. What remains is “comrica”, which differs from the Complainant’s registered trademark COMERICA solely by the omission of the letter “e”. The Panel finds on the evidence that the disputed domain name is sufficiently similar to the Complainant’s contrived and invented trademark as to constitute confusing similarity within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has not been granted any licence or permission to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The above circumstances are illustrative and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
In the absence of any Response, the onus of proof nevertheless rests upon the Complainant. The Complainant has stated, by implication on the basis of reasonable enquiry in the circumstances, that there is no evidence of the Respondent having made use or preparations for use of the disputed domain name in connection with a bona fide offering of goods or services, or of the Respondent having been known by a similar name, or of the disputed domain name having been put to any legitimate noncommercial or fair use. The Panel cannot conceive of any way in which the Respondent might claim rights or legitimate interests in respect of the disputed domain name. On the evidence and on the balance of probabilities the Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
The Complainant’s area of business, and the class of registration of its trademark, is banking services. Evidence in the form of screenshots of the Respondent’s website, to which the disputed domain name resolves, shows reference to banking and other services. At various dates the website has appeared to be in a parking state with what appear to be link heading such as “Business Banking”, “Comerica Credit Card”, “Personal Loans” and “Mobile Banking”. Another screenshot shows what appear to be link headings such as “checking account”, “payday loan” and “savings account”. There are a number of other apparent link headings such as “Airline tickets”, “Health insurance”, “Work from home” and “Used Cars”.
A screenshot of the website to which the disputed domain name resolved in 2004 displayed the promotion of Internet services with prices.
On the evidence, it may reasonably be concluded that the disputed domain name has essentially been parked pending some future purpose unknown and has in the interim been “monetized”, being a conventional business model in which an otherwise unused domain name resolves to a website displaying links to advertisers. Commonly an advertising service places and maintains the links and may target them to the perceived profile and domicile of the visitor. Advertising revenue may accrue variously among the domain name owner, the advertising service and others.
The generation of revenue from advertising links in return for the referral of visitors may be a legitimate activity in and of itself. It is not legitimate, however, to attract Internet visitors for commercial gain by the exploitation of confusion with another’s trademark used without authority. In the present instance, it may reasonably be predicted that a proportion of those Internet users who seek the website of the Complainant may make a typographical mistake when typing its trademark COMERICA and may instead type “comrica”, without an “e”. Such intending visitors, who expected to be taken to the Complainant’s website, will instead be diverted to the Respondent’s website and may be misled, at least initially, into believing that the banking services and links offered at the Respondent’s website have the endorsement of the Complainant. By this device, recognised and known by the name “typosquatting”, Internet visitors may be induced to follow links displayed on the Respondent’s website and the Respondent or third parties stand to receive commercial gain in the form of advertising revenue.
On the evidence and on the balance of probabilities, the Panel finds that the disputed domain name has been used by the Respondent for attempted commercial gain by creating a likelihood of confusion with the Complainant’s trademark, thereby constituting bad faith use within the meaning of paragraph 4(b)(iv) of the Policy. The Panel further finds on the balance of probabilities that the disputed domain name was registered or acquired by the Respondent for the bad faith purpose for which it has been used. Registration and use of the disputed domain name in bad faith are found by the Panel in the terms 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 <comrica.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: September 3, 2014