WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Cameron David Jackson
Case No. D2016-0628
1. The Parties
The Complainant is Comerica Bank of Dallas, Texas, United States of America ("US"), represented by Bodman PLC, US.
The Respondent is Cameron David Jackson of Kingston, Australia.
2. The Domain Name and Registrar
The disputed domain name <comericabank.xyz> is registered with Instra Corporation Pty Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 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 the Respondent of the Complaint, and the proceedings commenced on April 5, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2016.
On April 15, 2016, the Complainant notified the Center that it had become aware of three additional domain names owned by the Respondent and requested that they be added to the Complaint. On April 19, 2016, the Center replied, noting that the Rules do not specifically provide for a Complaint to be amended after the commencement of proceedings. The Center observed that it would be for the Panel to determine whether or not to accept the addition of new domain names to the Complaint and order further procedural steps, if any.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 26, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on April 29, 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
The Complainant is a financial services company located in Dallas, Texas. The Complainant has traded under the name "Comerica" since 1982. As of December 31, 2015, the Complainant was amongst the 35 largest US financial and bank holding companies with over USD 71 billion of assets.
The Complainant owns numerous registered trade marks including US service mark no. 4,746,568 for COMERICA BANK filed June 26, 2014, in class 36.
The disputed domain name was registered on March 1, 2016.
There is no evidence that it has been used other than as a registrar holding page.
5. Parties' Contentions
A summary of the Complainant's contentions is as follows:
The Complainant's mark is coined, distinctive and powerful. The Complainant invests millions of dollars every year promoting its marks. The Complainant's mark COMERICA is a famous mark.
The disputed domain name is identical to the Complainant's trade mark. The domain extension is a new generic Top Level Domain (gTLD) that should be considered irrelevant because it has no distinctive meaning and does not relate to the services associated with the Complainant's mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has not licensed the Respondent to use its trade marks.
There is no evidence of a bona fide offering of goods or services, that the Respondent has been commonly known by the disputed domain name or that the Respondent is making legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name has been registered and used in bad faith.
The Respondent must have known of the Complainant's trade marks at the time of registration of the disputed domain name. The Complainant's marks are well known and long predate registration of the disputed domain name.
It is not possible to conceive of any plausible legitimate use of the disputed domain name by the Respondent.
The Respondent has engaged in a pattern of registering and using domain names in bad faith. The Respondent has been the subject of numerous adverse UDRP decisions.
The disputed domain name constitutes passive holding in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Amendment of Complaint
The Panel has decided to reject the Complainant's request, made after service of the Complaint, to amend the Complaint to add three additional domain names owned by the Respondent which had recently come to the Complainant's attention.
If allowed, this would not simply be a question of inserting three new domain names into the Complaint. The Complaint would also need to be amended in detail to include additional facts, arguments and evidence relevant to the domain names. Thereafter the Amended Complaint would have to be served on the Respondent, thereby extending the date for a Response. In the Panel's view, all of this would inject significant complication and delay into a process which is intended to be relatively straightforward and expeditious. See paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
B. Identical or Confusingly Similar
The Complainant has rights in the mark COMERICA BANK by virtue of its registered trade mark as well as unregistered trade mark rights deriving from the extensive use of that name.
The disputed domain name is identical to the Complainant's trade mark, disregarding the gTLD suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
"…panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use…"
In this case, the Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith: the well-known and distinctive nature of the Complainant's trade mark; the lack of a response; and the fact that the Respondent has been the subject of numerous adverse UDRP decisions.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 <comericabank.xyz> be transferred to the Complainant.
Date: May 13, 2016