WIPO Arbitration and Mediation
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Domain Admin: Damon Nelson - Manager Quantec, LLC / Novo Point, LLC
Case No. D2015-0108
1. The Parties
Complainant is Comerica Bank (“Complainant”) of Dallas, Texas, United States of America (“USA”), represented by Bodman PLC, USA.
Respondents are Damon Nelson - Manager Quantec, LLC / Novo Point, LLC (individually and collectively, “Respondent”), of Dallas, Texas, USA.
2. The Domain Name and Registrar
The disputed domain name <comaerica.com> (the “Disputed Domain Name”) is registered with Fabulous.com Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2015. On January 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 23, 2015, the Registrar transmitted by email to the Center its verification response confirming Respondent as the listed 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 Respondent of the Complaint, and the proceedings commenced on February 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2015.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on March 5, 2015. 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 financial services company headquartered in Dallas, Texas. It is among the 40 largest U.S. holding companies with almost USD 69 billion in assets at September 30, 2014. In addition to Texas, Complainant has bank locations in many other states such as Arizona, California, etc., as well as in Canada and Mexico. Complainant owns U.S. Trademark Reg. No. 1,251,846 for the service mark, COMERICA, and U.S. Trademark Reg. No. 1,776,041 for the service mark, COMERICA (and Design), for use in “banking services”. In addition, there are other marks of Complainant that are registered in or pending before the U.S. Patent and Trademark Office, and that consist in whole or in part of the mark, COMERICA (individually and collectively, the “Trademarks”).
Complainant has been continuously using the Trademarks in connection with its financial services for over thirty years. During this time, Complainant has spent millions of dollars every year in the promotion of the products and services identified by its Trademarks. In addition, Complainant is the domain name registrant for the domain names <comerica.com>, <comerica.net> and <comerica.org> to name a few.
Respondent is not affiliated with Complainant, and is not authorized or licensed to use the Trademarks. Respondent registered the Disputed Domain Name on June 16, 2005, which includes an extra letter “a” to Comerica, and such Disputed Domain Name resolves to a number of confusing rotating websites.
In late 2010, Respondent became subject to the receivership of United States District Court for the Northern District of Texas. During the proceedings, the Court appointed Mr. Peter Vogel as Receiver; it appointed Ms. Lisa Katz as the manager of the portfolio of domain names controlled by the receivership; and, it appointed Mr. Damon Nelson as the interim and permanent manager of Novo Point, LLC and Quantec, LLC. In a February 28, 2014 order from the U.S. District Court for Northern District of Texas, the Court dismissed the case for lack of jurisdiction, vacated its previous orders, and scheduled a process for “winding down” the receivership. This “winding down” process was to be completed by March 7, 2014 with respect to all assets other than the cash held by the Receiver for fees and other like expenses. In an email to the Center on June 26, 2014, in connection with a different proceeding, Ms. Katz confirmed that her position, as appointed by the Court, had been vacated.
5. Parties’ Contentions
1. Respondent’s Disputed Domain Name is identical or confusingly similar to Complainant’s Trademarks because the Disputed Domain Name incorporates the Trademarks in their entirety and merely includes a second letter “a” to “Comerica”.
2. Respondent has no rights to or legitimate interests in the Disputed Domain Name because Respondent is not licensed with or otherwise permitted by Complainant and therefore not authorized to use Complainant’s Trademarks. Additionally, Respondent’s use of the Disputed Domain Name cannot serve as the basis of a legitimate interest or a bona fide offering of goods or services. It is further alleged that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name and purports to use the Trademarks for commercial gain.
3. The Disputed Domain Name allegedly was registered and is being used in bad faith by Respondent because:
1) Respondent first was hidden by the privacy registration service Whols Privacy Services Pty. Ltd. But later Quantec, LLC was identified as the domain registrant and since then records for the Disputed Domain Name have been updated and the renewal of the registration amounts to a registration;
2) Respondent, allegedly, must have known of Complainant’s rights in its marks when it registered the Disputed Domain Name. Complainant establishes this allegation on two observations: that Complainant had registered and used the mark for more than twenty years prior to Respondent’s registration/renewal of the Disputed Domain Name; and, that its mark was, at that time, already well-known and widely used;
3) a number of the rotating websites to which the Disputed Domain Name resolves are intended to (i) direct Internet users to websites that advertise services that are not sponsored by or affiliated with Complaint, or disrupt Complainant’s business and trade off Complainant’s goodwill by creating the appearance of an unauthorized association between these sites and Complainant’s Trademarks, or (ii) make a commercial use of the Disputed Domain Name for commercial gain;
4) Further proof to support commercial gain is that the Disputed Domain Name once resolved to a parking page with sponsored links that connected to financial services of Complainant’s competitors. It is a well-known practice that displaying various links enables the host of a search engine or webpage to collect financial compensation proportional to the number of connections. And prior UDRP decisions have established that such bad faith is sufficient and the owner is responsible for a website’s content regardless of who gains profits from the placement of links;
5) Respondent’s use of “robots.txt” – a circumvention mechanism – is a relevant consideration for purposes of assessing bad faith;
6) Respondent has allegedly engaged in a pattern of conduct of registering and using domain names and previous UDRP decisions involving Respondent were ruled in favor of the complaints in those cases.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s mark.
UDRP panels have consistently concluded that a domain name’s inclusion of a registered mark in its entirety results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a Domain Name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (<playboysportsbook.com> was found confusingly similar to the PLAYBOY mark); and Adaptive Molecular Technologies, Inc. v. Piscilla Woodward & Charles R Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (the distinctive feature of the domain name was complainant’s mark).
Complainant has shown that it has owned United States registrations for trademarks consisting of or incorporating the name “Comerica” since 1982, that it is in the business of financial services, and that it is the registrant of the domain name <comerica.com> which it maintains in connection with its financial services throughout many states of the United States, as well as Canada and Mexico. Complainant also demonstrates that it is among the 40 largest United States holding companies with almost USD 69 billion in assets. Such longstanding and widespread use is sufficient to establish that the name and mark are famous and are identifiable with Complainant.
The Disputed Domain Name differs from Complainant’s Trademarks only by the addition of the letter “a” to the trademark COMERICA. The Disputed Domain Name is a predictable mistyping of Complainant’s Trademarks. Respondent’s registration of the Disputed Domain Name that constitutes a common mistyping of Complainant’s mark appears to be deliberate – a practice known as “typosquatting” (the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark). See, e.g., Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd., WIPO Case No. D2000-1293.
Given the foregoing, the Panel finds that the Disputed Domain Name and Complainant’s Trademark, when directly compared, are confusingly similar.
B. Rights or Legitimate Interests
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762. Accordingly, Complainant need only make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. “Upon such a showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names.” Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014-1819.
In this case the Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances:
- Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the Trademarks in the Disputed Domain Name or any other domain name.
- There is no indication of Respondent’s use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services prior to the dispute.
- There is no indication in the file that Respondent is known under the Disputed Domain Name.
- There is no indication that Respondent has made a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to divert consumers or to tarnish the trademark.
Respondent did not reply to Complainant’s contentions. Therefore the only plausible reason, in the view of the Panel, for Respondent to register the Disputed Domain Name was to divert Internet users to Respondent’s website by implying an affiliation with or sponsorship by Complainant or that Complainant approves of and sanctions Respondent’s website. See Ticketmaster Corp. v. DiscoverNet, Inc., WIPO Case No. D2001-0252 (finding no rights or legitimate interests where respondent generated commercial gain by intentionally and misleadingly diverting users away from complainant’s site to a competing website); The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474 (finding that Respondent’s use of the disputed domain names is confusingly similar to complainant’s mark, and respondent’s use to sell competing goods was an illegitimate use and not a bona fide offering of goods). This is neither noncommercial nor fair use of the disputed domain name.
For the foregoing reasons, the Panel concludes that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by Complainant and that Respondent’s bad faith registration and use of the Disputed Domain Name have been proven.
Paragraph 4(b) provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a disputed domain name:
(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trade mark or service mark, or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark 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 [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with 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 your location.
The Panel finds that the circumstances set out in paragraph 4(b)(iv) are fulfilled here.
In the Panel’s view there is sufficient evidence that leads to the finding that Respondent acquired the Disputed Domain Name primarily for the purpose of attracting, for commercial gain, Internet users to Respondent’s website or other online locations by creating a likelihood of confusion with Complainant’s Trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.
Two of the rotating websites to which the Disputed Domain Name resolves show Respondent’s use creates an unauthorized impression of association/sponsorship/affiliation between Complainant’s Trademarks and the Disputed Domain Name. The first website is entitled “Attention Online Banking Visitors” where Internet users are encouraged to check credit records, and they believe Respondent to be a trustworthy and well-known corporation (i.e., Complainant). The second one is Foot Locker’s website, which directs Internet users to advertising services that are not sponsored or endorsed by, or affiliated with Complainant.
Another two of the rotating websites to which the Disputed Domain Name resolves evidence that commercial gain is obtained through this confusion. One displays warning messages to encourage the Internet user to use certain technical support services and the other is a parking page with sponsored links that connected to financial services competing with complainant, where every link activated by Internet user enables to collect financial compensation proportionally.
Although there is insufficient proof to demonstrate that Respondent is employing robots.txt to prevent access to the historical use of a domain name involved in a UDRP proceeding, without the benefit of any explanation by Respondent, this should not be deemed as evidence of Respondent’s good faith either.
In the Panel’s view, Respondent’s pattern of conduct of registering and using domain names in bad faith suffices as proof of bad faith.
In the Panel’s view, the failure of Respondent to respond to Complainant further supports a finding of bad faith registration and use.
For the foregoing reasons, the Panel concludes that the third element of the Policy has been established.
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, <comaerica.com> be transferred to Complainant.
Maxim H. Waldbaum
Date: March 16, 2015