WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Adex Adex
Case No. D2016-1438
1. The Parties
Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America ("United States" or U.S.).
Respondent is Adex Adex of Ohio, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <comericabankusa.com> is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 14, 2016. On July 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 July 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 11, 2016.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 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
Complainant, Comerica Bank, is a financial services company headquartered in Dallas, Texas with additional banking locations in the U.S. states of Arizona, California, Florida and Michigan, as well as Canada and Mexico. Complainant has submitted as Annexes 6 through 9 to the Complaint, copies of its U.S. service mark registrations for the COMERICA and COMERICA BANK marks and related marks. Complainant also owns the domain name <comerica.com>, which it uses in connection with its financial services.
The disputed domain name <comericabankusa.com> was registered on or about May 24, 2016. Currently, the disputed domain name does not resolve to any web page.
5. Parties' Contentions
Complainant asserts that it has used and promoted the COMERICA and COMERICA BANK marks in connection with Complainant's financial services for more than 30 years and that as a result the COMERICA mark has become well-known in the United States.
Complainant contends that the disputed domain name is confusingly similar to Complainant's COMERICA mark because it contains the COMERICA and COMERICA BANK marks in their entirety. Complainant also contends that the inclusion in the disputed domain name of the suffix "usa" creates confusion because the suffix "USA" serves to emphasize the geographical location of Complainant's business, thereby suggesting a relationship with Complainant.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, is not in any way affiliated with or licensed by Complainant, and has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent has used the disputed domain name to pose as Complainant and to perpetrate a phishing scam.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent must have known of Complainant's well-known COMERICA and COMERICA BANK marks, which have been used by Complainant for over 30 years in the U.S., and given that Respondent has used the disputed domain name to (a) resolve to a website that copied the website of Complainant, and (b) perpetrate a phishing attack. Complainant further asserts that Respondent's use of questionable contact information in the Whois records for the disputed domain name, Respondent's failure to respond to a demand letter sent by Complainant to Respondent, and Respondent's subsequent passive holding of the disputed domain name are likewise proof of bad faith registration and use by Respondent.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel 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 was registered and is being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states:
"4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent's default does not automatically result in a decision in favor of the complainant … the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding."
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it owns and uses the COMERICA and COMERICA BANK marks, which have been registered and in use in the United States well before Respondent registered the disputed domain name. Complainant has also submitted ample evidence that the COMERICA mark is known in the United States in relation to financial services.
With Complainant's rights in the COMERICA and COMERICA BANK marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain ".com") is identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant's COMERICA and COMERICA BANK marks as it incorporates the COMERICA and COMERICA BANK marks in their entirety at the head of the disputed domain name. The addition of the geographic suffix "usa" does not distinguish the disputed domain name from Complainant's COMERICA and COMERICA BANK marks and in fact heightens the confusion by suggesting that the disputed domain name is related to Complainant and/or Complainant's company in the United States. See e.g.,eBay, Inc. v. Sunho Hong, WIPO Case No. D2000-1633; Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the COMERICA and COMERICA BANK marks and in showing that the disputed domain name is identical or confusingly similar to those trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, well aware of Complainant and its COMERICA and COMERICA BANK marks and does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or fair use of the disputed domain name in connection with any product or service. Rather, Respondent has used the disputed domain name to mislead unsuspecting customers of Complainant by posting a fraudulent copy of Complainant's website at the disputed domain name in order to obtain personal information from such individuals, such as account and login information. Such use of the disputed domain name constitutes phishing and does not, and cannot, constitute a bona fide use or legitimate interest.
Moreover, it should be noted that Complainant sent a demand letter to Respondent regarding Respondent's activities. Respondent never responded to Complainant's demand letter. Such action by Respondent, whose real identity may not be known at this point, is further evidence of Respondent's lack of any legitimate interest in the disputed domain name.
Given that Complainant has established with sufficient evidence that it owns rights in the COMERICA and COMERICA BANK marks, and given Respondent's above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
The Panel finds that Respondent's actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(i) 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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 website or location or of a product or service on your website or location."
In the present case, Respondent has registered the disputed domain name that fully incorporates Complainant's COMERICA and COMERICA BANK marks with the geographic suffix "USA". Such combination of a geographic suffix "usa" with Complainant's well-known COMERICA and COMERICA BANK marks creates a likelihood of confusion by suggesting to consumers that the disputed domain name relates to Complainant's activities and services in the United States. Given that Respondent has used the disputed domain name to post a fraudulent copy of Complainant's website in order to obtain login and account information from customers of Complainant, there can be no doubt that Respondent was well aware of Complainant and its COMERICA and COMERICA BANK marks when Respondent registered the disputed domain name. Needless to say, given that the uncontested evidence shows that Respondent has used the disputed domain name to post a fraudulent copy of Complainant's website, it is obvious that Respondent specifically targeted Complainant and its COMERICA and COMERICA BANK mark, and has done so opportunistically and in bad faith.
Respondent's bad faith is further established by Respondent's (i) use of questionable contact information to conceal his identity in the Whois records for the disputed domain name, (ii) failure to respond to a demand letter sent to Respondent by Complainant, and (iii) passive holding of the disputed domain name after receipt of a demand letter from Complainant – thereby forcing Complainant to institute this proceeding to prevent further abuse of its COMERICA mark. Such actions by Respondent, when coupled with Respondent's phishing scam, underscore Respondent's bad faith registration and use of the disputed domain name.
Accordingly, the Panel finds that Complainant succeeds under this element 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 <comericabankusa.com> be transferred to the Complainant.
Date: September 3, 2016