WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Upendra Lamsal
Case No. D2016-1864
1. The Parties
The Complainant is Comerica Bank of Dallas, Texas, United States of America (“US”), represented by Bodman PLC, US.
The Respondent is Upendra Lamsal of Kathmandu, Bagmati, Nepal.
2. The Domain Name and Registrar
The disputed domain name <thecomericabank.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2016. On September 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 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 the Complainant on September 16, 2016 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 September 16, 2016.
The Center verified that the Complaint together with the amendment to the Complaint (hereinafter referred both together as 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 October 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2016.
The Center appointed Mihaela Maravela as the sole panelist in this matter on November 1, 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 headquartered in Dallas, Texas. As of June 30, 2016 the Complainant was among the 35 largest US financial and bank holding companies and had over USD 71 billion in assets. In addition to Texas, the Complainant has bank locations in Arizona, California, Florida and Michigan, with select businesses operating in several other states, as well as in Canada and Mexico.
The Complainant adduced evidence of the trademark registrations that include:
- United States Patent and Trademark Office (“USPTO”) Registration No. 1,251,846 for the service mark COMERICA, used in commerce since 1982 and registered on September 20, 1983.
- USPTO Registration No. 4,746,568 for the service mark COMERICA BANK, used in connection to banking services, financing services, financial advisory and consultancy services since 2014 and registered on June 2, 2015.
The disputed domain name was registered on August 11, 2016 and at the date of the Complaint it resolves to an index page.
5. Parties’ Contentions
The Complainant argues that the trademarks COMERICA and COMERICA BANK are coined, distinctive, and powerful, and symbolize the goodwill of the Complainant. As a result of the long use of the trademark COMERICA and its widespread commercial recognition, the trademark is famous under US federal and state trademark laws. The disputed domain name is identical to the trademarks since the disputed domain name incorporates the trademarks in their entireties and is not made distinctive by the inclusion of the definitive article “the” and/or the non-distinctive word “bank”. The mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity.
The Complainant also argues that the Respondent has no rights or legitimate interest in respect of the disputed domain name since it has not granted the Respondent a license or otherwise permitted the Respondent to use the trademark or the disputed domain name. There is no evidence that the Respondent has either actually used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, and there is no evidence that the Respondent has been commonly known by the disputed domain name.
In addition, the Complainant argues that the disputed domain name should be considered as having been registered in bad faith by the Respondent since the trademark COMERICA is a well-known trademark that has been in use in connection with the Complainant’s banking services since 1982. Because of the Complainant’s large presence in America, as well as its presence in Canada and Mexico, the Respondent must have known of the Complainant’s rights in the trademarks at the time of the disputed domain name registration. An additional evidence of bad faith is that the Respondent never replied to the cease-and-desist letters provided by the Complainant. Moreover, the disputed domain name should be considered as being used in bad faith since it resolves to an index page and this passive holding of the disputed domain name constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Noting the fact that the Respondent has not filed a response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A 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 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Here, the Complainant has demonstrated inter alia its ownership of trademarks in COMERICA and COMERICA BANK mentioned above.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain names to the trademarks.
UDRP panels customarily treat the first element of a UDRP complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”; some panels refer as well to the “overall impression” created by the domain name. See WIPO Overview 2.0, paragraph 1.2.
In this case, this Panel concludes that the disputed domain name <thecomericabank.com> is confusingly similar to the trademark COMERICA BANK of the Complainant since the addition of the prefix “the” is not sufficient to make a distinction from the Complainant and its trademarks. For a similar finding Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
It is well accepted by UDRP panels that a gTLD, such as “.com”, is typically ignored when assessing identity or confusing similarity between a trademark and a disputed domain name.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states: “[…] 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 a 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 […]”.
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has established that it is the owner of the trademarks COMERICA and COMERICA BANK, and claims that the Complainant has it not licenced or otherwise authorised the Respondent to use the said trademarks. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Comerica”, “Comerica bank”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names See for a similar finding KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910.
The Panel therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain names’ registration and use in bad faith.
The fact that the disputed domain name is confusingly similar with the Complainant’s trademarks and that the said trademarks have been used for a long period of time prior to the registration of the disputed domain name indicate not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that the Respondent registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.
The Complainant’s COMERICA trademark, included in the disputed domain name, has been registered for over 30 years prior to the registration of the disputed domain name, such that it is unlikely that the Respondent was unaware of the Complainant’s rights when it registered the disputed domain name. See Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Ryan Murray, WIPO Case No. D2016-0062.
Also, as other panels have held, the Complainant’s trademark, COMERICA is a well-known mark and name in the banking field with no independent meaning. Comerica Incorporated v. Thanart Chamnanyantarakij, WIPO Case No. D2011-0708.
The Respondent provided no explanations for why it registered the disputed domain name.
The Respondent has failed to make to date any genuine use of the disputed domain name. The absence of any bona fide use of the domain name at the very least results in a failure to rebut the inference noted above. See for a similar finding Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.
An additional factor retained by the Panel as indicative of bad faith registration and use of the disputed domain name is Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210).
In the Panel’s view these circumstances represent evidence of registration and use in bad faith of the disputed domain name.
Consequently, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <thecomericabank.com> be transferred to the Complainant.
Date: November 15, 2016