WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Eli Tomlinson, Eli’s Software Encyclopedia
Case No. D2016-0044
1. The Parties
Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America (“the United States”).
Respondent is Eli Tomlinson, Eli’s Software Encyclopedia of Clarks Summit, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <comerica.mortgage> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2016. On January 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 9, 2016.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on February 11, 2016. 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 with locations in Texas and other locations within the United States, as well as in Canada and Mexico. As of September 30, 2015, Complainant was one of the 35 largest U.S. financial and bank holding companies, with over USD 71 billion in assets. Complainant began using the COMERICA Mark in 1982 and owns numerous United States registrations for its COMERICA Mark, such as no. 1,251,846 COMERICA (word mark), registered on September 20, 1983. Complainant also owns the domain names <comerica.com>, <comerica.net>, and <comerica.org>.
The disputed domain name was registered on April 14, 2015.
5. Parties’ Contentions
Complainant states that its COMERICA Mark is coined, distinctive, and powerful, and symbolizes the goodwill of Complainant. Complainant asserts that it invests millions of dollars every year in promoting the goods and services identified by its COMERICA Mark, such that the mark has become famous with widespread commercial recognition. Complainant alleges that the disputed domain name is identical to its COMERICA Mark, and the new generic Top-Level Domain (“gTLD”) “.mortgage” heightens inevitable confusion because it implies a connection to the financial services provided by Complainant.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not permitted Respondent to use the COMERICA Mark, there is no evidence that Respondent was using the disputed domain name in connection with a bona fide offering of goods or services, there is no evidence that Respondent has been commonly known by the disputed domain name, and Respondent’s use of the disputed domain name has been to redirect Internet users to another website where Respondent sells domain names.
Regarding bad faith registration, Complainant states that Respondent must have known of Complainant’s rights in the COMERICA Mark when registering the disputed domain name because it is a famous mark that has been in use for over 30 years. Regarding bad faith use, Complainant alleges that Respondent is using the disputed domain name to redirect Internet users to a website accessed through the domain name <eli.domains>, which contains blog posts about the benefits of owning descriptive TLDs and the availability for purchase of multiple domains.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the COMERICA Mark in view of its trademark registrations. The Panel furthers finds that the disputed domain name is confusingly similar to the COMERICA Mark because it incorporates the entirety of the mark. Moreover, the addition of the “.mortgage” gTLD serves to enhance the likelihood of confusion because it references the field in which Complainant operates.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that Complainant has not licensed or otherwise permitted Respondent to use the COMERICA Mark, and that there is no evidence that Respondent has been commonly known by the disputed domain name. Further, the Panel finds that Respondent’s use of the disputed domain name to redirect to a website which Respondent is using to sell other domain names is not a bona fide use. Therefore, Complainant has made out a prima facie case that Respondent lacks rights or legitimate interest in the disputed domain name, and Respondent has failed to rebut this showing.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Regarding bad faith registration, Complainant’s COMERICA Mark has been registered for over 30 years, such that it is unlikely that Respondent was unaware of Complainant’s mark when it registered the disputed domain name. Moreover, the disputed domain name also includes the “.mortgage” gTLD, which references Complainant’s business and therefore further indicates that Respondent was aware of Complainant and its rights in the COMERICA Mark.
Regarding bad faith use, paragraph 4(b)(i) of the Policy states that the following shall be evidence of bad faith:
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.
Although Respondent has offered to sell the disputed domain name to Complainant at a price higher than what he paid for it, the disputed domain name redirects to a website where Respondent offers other domain name names for sale. It is a fair inference that Respondent registered the disputed domain name for the purpose of reselling it. Respondent has not denied the allegation (and reasonable inference) that it intended to ask for consideration in excess of his reimbursement costs, which conduct violates paragraph 4(b)(i) of the Policy when the disputed domain name incorporates another entity’s trademark. See Rhodia v. Paperboy and Co., WIPO Case No. D2006-0851.
Respondent’s use of the disputed domain name also falls under paragraph 4(b)(iv) of the Policy, as it intentionally attracts Internet uses to Respondent’s own website by creating a likelihood of confusion with Complainant’s mark, and he commercially benefits from this confusion by offering domain names for sale at this website.
The Panel finds that Complainant has satisfied 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, <comerica.mortgage> be transferred to Complainant.
Lawrence K. Nodine
Date: February 25, 2016