WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Transure Enterprise Ltd / Above.com Domain Privacy
Case No. D2015-0961
1. The Parties
The Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman LLP, United States of America.
The Respondent is Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <comerics.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2015 naming Above.com Domain Privacy of Beaumaris, Victoria, Australia as Respondent. On June 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2015, 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 June 15, 2015 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 June 15, 2015 stating that the Respondent should be identified as Transure Enterprise Limited of the British Virgin Islands.
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 June 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2015.
The Center appointed C. K. Kwong as the sole panelist in this matter on July 20, 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
The Complainant is the owner of numerous trademarks consisting of or comprising the word “COMERICA”. These registrations include United States Trademark Registration No. 1251846 registered on September 20, 1983 in respect of banking services claiming first use in commerce in 1982.
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid COMERICA mark occurred many years before the registration of the disputed domain name <comerics.com> on March 30, 2009.
There is no evidence produced or contained in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions:
1. The Complainant is a substantial financial services company with over USD 69 billion in assets as at March 31, 2015 and headquartered in Texas with operations in other parts of the United States of America, as well as in Canada and Mexico. The Complainant has rights in the trademark COMERICA, which is a coined word. The Complainant claims that as a result of investing millions of dollars annually in the promotion of products and services identified by the mark COMERICA, it has become famous and distinctive of the Complainant.
2. The disputed domain name is identical or confusingly similar to the mark COMERICA because it is identical to the mark except that the letter “a” is replaced with the letter “s”. This would be a common typographical error made by consumers attempting to access a website of the Complainant. The change of “a” to “s” is not sufficient to distinguish the disputed domain name from the Complainant’s mark COMERICA.
3. The disputed domain name redirects Internet visitors to rotating websites, one of which provides similar financial services. One such webpage entitled “attention COMERICA Bank visitors” identified by the Complainant [Annex 10 to the Complaint] displayed a logo which is similar to the Complainant’s US trademark registration no. 1,776,041 for the COMERICA word and device [Annex 7 to the Complaint] and US trademark registration no. 4746568 for the word mark COMERICA BANK [Annex 8 to the Complaint] which added to natural confusion.
4. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. It has not registered any trademarks corresponding to the disputed domain name. The disputed domain name has not been used for a bona fide offering of goods or services by the Respondent. The Complainant has not licenced or permitted the Respondent to use the mark or the disputed domain name.
5. The mark COMERICA is well known. It had been used by the Complainant for almost 30 years before the registration of the disputed domain name. The Respondent knew or should have known of the registration and/or use of the Complainant’s trademark before registering the disputed domain name.
6. The disputed domain name redirects or resolves to a webpage which was directed to COMERICA Bank visitors and other websites inviting Internet users to participate in surveys regarding COMERICA [Annexes 10 and 11 to the Complaint]. These are evidence of attempts to deliberately mislead Internet users into believing that those websites are connected to, authorized by, or affiliated with the Complainant. These activities were for the Respondent’s commercial gain and misuse in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. The naming of party and notice of proceedings
The contact particulars of the Registrant of the disputed domain name as of May 6, 2015 as set out in the WhoIs search results provided in Annex 1 to the Complaint showed Above.com Domain Privacy as the Registrant. The WhoIs.internet.net search conducted by the Center on June 19, 2015 in the course of its compliance check as contained in the case file indicated Above.com Domain Privacy as the Registrant.
Despite the above, the answers provided by the Registrar to the Center on June 12, 2015 in response to the Center’s request for Registrar Verification disclosed the Registrant of the disputed domain name as “Transure Enterprise Limited”.
The Complainant filed an Amendment to identify the Respondent as Transure Enterprise Limited on June 15, 2015 as shown on page 19 of the case file following the said Verification particulars provided by the Registrar.
On June 19, 2015, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceedings to both (a) Transure Enterprise Limited (being the Registrant of the disputed domain name as identified by the Registrar) and (b) Above.com Domain Privacy (being the Registrant of the disputed domain name as shown in the aforesaid online search particulars obtained by the Complainant and the Center). The said notification was sent by post/courier, facsimile and email as per the contact particulars so provided with copies to the Registrar.
In the circumstances, the Panel finds that the proper party to these proceedings has been named and notified. As long as the Complainant or the Center as the case may be communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective notice obligations will be discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
B. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[the] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under, these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision for the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trademark COMERICA by reason of its trademark registration as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark COMERICA.
The disputed domain name <comerics.com> differs from the Complainant’s mark merely by replacement of the letter “a” at the end of the word with the letter “s” and the addition of the generic Top-Level Domain (gTLD) “.com”. The substituted letter “s” is just adjacent to the letter “a” on the keyboard. As the misspelt “Comerica” as “Comerics” remains the dominant or principal component of the disputed domain name, the present case falls within the category of typo-squatting as described in paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). See Tumblr, Inc. v. Jingsheng Feng, WIPO Case No. D2013-0454 and Sallie Mae, Inc. v. WhoIs Agent/linyanxiao WIPO Case No. D2013-1170.
It is well established practice to disregard the gTLD part of a domain name, such as “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark COMERICA well before the Respondent’s registration of the disputed domain name <comerics.com>. The Complainant has confirmed that it has not licensed or permitted the Respondent to use its mark.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word “comerics” in the disputed domain name.
There is no evidence before the Panel to suggest that the Respondent is commonly known as <comerics.com>.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
Accordingly, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
Given the Complainant’s supported claim of registration of its said COMERICA trademark and the apparent use of that mark for many years before the registration of the disputed domain name, there is a strong case for the Respondent to come forward to defend itself. The Respondent has not come forward with any defence on its choice of embodying almost entirely the word “comerica” as part of the disputed domain name but replacing the letter “a” at with the letter “s” which is the letter immediately adjacent to the letter “a” on a keyboard.
The incorporation of the word “comerics” as part of the disputed domain name without any explanation under the above circumstances, the mark COMERICA being a coined word which makes it more unique and distinctive of the Complainant, and the prior registration and extensive use of the Complainant’s mark lead to the irresistible conclusion that the Respondent must have been aware of the existence of the Complainant and its trademark COMERICA at the time of the registration of the disputed domain name.
The contents of the website to which the disputed domain names resolves or re-directs as shown in Annexes 10 and 11 to the Complaint are telling. Other than demonstrating a skillful way of referring to the mark COMERICA and obviously directed to the customers of the Complainant, they also show a clear acknowledgement of actual knowledge of the Complainant and its trademark. The credit check offered to Comerica Bank visitors in Annex 10 and invitation to Comerica survey in Annex 11 were clearly directed to Comerica’s customers and/or Internet users trying to find out more information about the Complainant.
The Panel finds that the circumstances under paragraph 4(b)(iv) of the Policy have been established.
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith under 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 <comerics.com> be transferred to the Complainant.
C. K. Kwong
Date: August 3, 2015