WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Kerry Fritz II, www.bankoftheplanetearth.com
Case No. D2017-2498
1. The Parties
Complainant is Comerica Bank of Dallas, Texas, United States of America (“United States”), represented by Bodman PLC, United States.
Respondent is Kerry Fritz II, an individual, and the organization www.bankoftheplanetearth.com of Las Animas, Colorado, United States.
2. The Domain Names and Registrar
The disputed domain names <comerica.club> and <comerica.space> (the “Domain Names”) are 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 December 15, 2017. On December 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 22, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed slightly from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 22, 2017 informing Complainant that the registrant and contact information disclosed by the Registrar, included both the organization “www.bankoftheplanetearth.com” and an individual “Kerry Fritz II” and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 22, 2017.
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 December 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 15, 2018 other than a brief email communication from Respondent on December 30, 2017. Respondent did not reply to Complainant’s contentions. Accordingly, the Center informed the Parties on January 26, 2018 that the panel appointment process would commence.
The Center appointed John C McElwaine as the sole panelist in this matter on January 30, 2018. 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 headquartered in Dallas, Texas with other bank locations in Arizona, California, Florida and Michigan, with select businesses operating in several other states, as well as in Canada and Mexico.
Complainant owns trademark rights in the mark COMERICA and is the owner of United States registrations, including: U.S. Registration No. 1,251,846 for the service mark, COMERICA, reciting “banking services”, and U.S. Registration No. 1,776,041 for the service mark, COMERICA (and Design) reciting “banking services”.
Respondent registered both Domain Names with the Registrar on July 31, 2017. The Domain Names link to a website at “www.bankoftheplanetearth.com”.
5. Parties’ Contentions
With respect to the first element of the Policy, Complainant bases its Complaint on Complainant’s rights in the COMERICA trademark (the “COMERICA Mark”). Complainant asserts to be the owner of 46 marks that are registered in or pending before the United States Patent and Trademark Office, and which consist in whole or in part of the mark, COMERICA. Complainant further asserts that the COMERICA Mark is coined. Complainant claims that the COMERICA Mark is strong and distinctive by virtue of millions of dollars every year in the promotion of the products and services identified by the COMERICA Mark. Further, Complainant asserts that as a result of its long use and widespread commercial recognition, the COMERICA Mark is famous under United States federal and state trademark laws. In addition, Complainant is the registrant of the domain names <comerica.com>, <comerica.net>, and <comerica.org>. Complainant alleges that the Domain Names are confusingly similar to the COMERICA Mark because the Domain Names incorporate the COMERICA Mark in its entirety.
With respect to the second element of the Policy, Complainant asserts that it has not granted Respondent a license or otherwise permitted Respondent to use the COMERICA Mark or the Domain Names and that Respondent is not commonly known by Domain Names. Complainant also asserts that there is no evidence of Respondent’s use of, or preparation to use, the Domain Names in connection with a bona fide offering of goods or services. Instead, the Domain Names resolve to a website that contains nonsensical pictures and text and a listing of domain names that Respondent claims to own. Additionally, this website invites the browser to submit his/her name and email to “turn your financial system from one of debt-based to asset-based”.
With respect to the third element of the Policy, Complainant asserts that Respondent must have known of Complainant’s rights in the COMERICA Mark at the time of registration of the Domain Names because of Complainant’s significant presence in the United States, as well as its presence in Canada and Mexico. Complainant also claims that Respondent can also be charged with constructive knowledge of the COMERICA Mark. Complainant points out that Respondent’s refusal to reasonably respond after receiving a cease-and-desist letter from Complainant further evidences Respondent’s bad faith. Complainant also contends that Respondent has engaged in a pattern of bad faith domain name registrations. As evidence, Complainant submits a reverse look up of domain names owned by the registrant’s name and identifies Respondent as the current or past owner of 3,715 domain names, including the following which contain the well-known British Airways mark: <britishairways.space>, <britishairways.tech>, <british-airways.space>, <british-airways.top>, <british-airways.top>, <british-airways.us>, and <british-airways.xyz>. Complainant claims Respondent has no legitimate interest in the Domain Names and that they are being used to intentionally attempt to attract, for commercial gain, Internet users to the website or another online location, by creating a likelihood of confusion with the COMERICA Mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the websites or location. Furthermore, Complainant alleges that Respondent’s action of registering the Domain Names and using it to direct Internet traffic to its website evidences a clear intent to disrupt Complainant’s business and deceive consumers, and constitutes a blatant attempt to misappropriate Complainant’s well-established, famous COMERICA Mark.
Respondent did not reply to Complainant’s contentions. In its email communication of December 30, 2017, Respondent simply stated “you have no standinng” (sic).
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established trademark rights in the COMERICA Mark as evidenced by its trademark registrations and its use of the COMERICA Mark in connection with financial services. The Domain Names consist of the identical word COMERICA followed by their respective top-level domain extension (“.club”, “.space”), which does not serve to distinguish the Domain Names from the COMERICA Mark.
Based upon the foregoing, the Panel finds that Complainant has standing to bring this proceeding and has met its burden of showing that the Domain Names are confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Names. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Names. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant contends it has not licensed or otherwise provided authorization for Respondent to use or register the Domain Names. Although Respondent has been properly notified of the Complaint by the Center, Respondent only submitted a brief email communication which did not address Complainant’s contentions.
Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
As an initial matter, Respondent cannot satisfy paragraph 4(c)(ii) of the Policy. There is no evidence in the record that Respondent is commonly known by the name “Comerica.”
Complainant has provided evidence that the Domain Names resolve to a website entitled, “Welcome To The Bank Of The Planet EARTH”. The Panel has reviewed this website and can find no mention of the word “comerica”. Instead, the website contains pictures and text that make little sense, and a listing of domain names that Respondent claims to own. Additionally, this website invites the browser to submit his/her name and email to “turn your financial system from one of debt-based to asset-based”.
The Panel finds that the use of the Domain Names in an effort to collect personal information is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See BJ’s Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty, WIPO Case No.D2015-1601. There is also no evidence to suggest that Respondent has ever used, or made preparations to use, the Domain Names or any name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Given that the Domain Names are identical to Complainant’s coined or arbitrary COMERICA Mark and resolve to a website that displays text and images completely unrelated to Complainant or the word COMERICA, there is no discernable good faith reason for Respondent to have used the COMERICA Mark in the Domain Names. Statoil ASA v. Ken Suzue, WIPO Case No. D2016-0895 (finding a website displaying nonsensical text was not a bona fide offering of goods or services).
Lastly, Respondent’s use of the Domain Name is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy. There is no criticism or commentary on Complainant and in fact, as discussed earlier, no reference to the COMERICA Mark.
Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to rebut that showing. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Names, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Complainant contends that Respondent registered and is using the Domain Names in bad faith as evidenced by the allegations that (i) Respondent knew or should have known of Complainant’s trademark rights in the COMERICA Mark; (ii) Respondent’s use of Domain Names with the content on its website is akin to passively holding the Domain Names; (iii) Respondent failed to respond to a demand letter or to the Complaint; and (iv) Respondent has engaged in a pattern of bad faith registration of domain names.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known of Complainant’s COMERICA Mark, when it decided to register the Domain Names, both of which fully incorporate Complainant’s COMERICA Mark in its entirety.
With respect to bad faith use, Complainant contends that the Domains Names are being used to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the COMERICA Mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the websites or location. Respondent has provided no evidence of its use of the Domain Names that would legitimately be related to the COMERICA Mark. In fact, Respondent is not using the Domain Names in any manner to demonstrate a bona fide use. However, it is clear that the Domain Names were chosen and are being used to draw an association with Complainant. The term “Comerica” is well known and is a coined term. See also Comerica Bank v. Adex Adex, WIPO Case No. D2016-1736 (finding the COMERICA Mark is distinctive and well-known). In light of these factors, the Panel finds that Respondent’s use of the Domain Names satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Names were registered and are being used in bad faith by Respondent.
Because the Panel finds that Respondent knew or should have known of Complainant’s trademark rights and that Respondent’s described use of the Domain Names is evidence of registration and use of the Domain Names in bad faith, the Panel need not address the issue of whether Respondent’s registration of other domain names amounts to a pattern and prohibited Complainant from registering its mark in a corresponding domain name.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Names 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 Domain Names <comerica.club> and <comerica.space> be transferred to Complainant.
John C McElwaine
Date: February 13, 2018