WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Ryan Murray
Case No. D2016-0062
1. The Parties
Complainant is Comerica Bank of Dallas, Texas, United States of America (“United States”), represented by Bodman PLC, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Ryan Murray of East Lansing, Michigan, United States.
2. The Domain Name and Registrar
The disputed domain name <comerica.xyz> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2016. On January 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2016, 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 Complainant on January 15, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 15, 2016.
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 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 8, 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, Arizona, California, Florida, Michigan, Canada and Mexico. As of September 30, 2015, Complainant was one of the 35 largest United States 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, the first of which 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 August 12, 2015 and expires on August 13, 2016.
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”) extension “.xyz” should be considered irrelevant because it has no particular distinctive meaning of its own and does not related to the services associated with the Mark.
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 there is no evidence that Respondent is making a legitimate noncommercial fair use of the disputed domain name without intent for commercial gain.
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 the disputed domain name resolves to a webpage with links such as “Comerica Bank” and “Mortgage Bank”, which access webpages containing sponsored links, some of which connect to financial services that compete with Complainant’s financial services.
Respondent did not reply to 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, and the addition of the “.xyz” gTLD does not differentiate the disputed domain name from Complainant’s COMERICA Mark.
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 host pay-per-click advertisements and to redirect to Complainant’s competitors is not a bona fide use. See, e.g., Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021. Therefore, Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests 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 rights when he registered the disputed domain name. Regarding bad faith use, because the disputed domain name resolves to a parked page featuring links to Complainant’s competitors to generate financial gain, the Panel finds that the disputed domain name is being used in bad faith because Respondent has “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 web site or location or of a product or service on your web site or location”, Policy, 4(b)(iv).
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.xyz> be transferred to Complainant.
Lawrence K. Nodine
Date: February 25, 2016