WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Domain Administrator, See PrivacyGuardian.org / Gunberk Hatipoglu
Case No. D2018-0814
1. The Parties
The Complainant is Comerica Bank, of Dallas, Texas, United States of America ("United States"), represented by Bodman PLC, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States / Gunberk Hatipoglu of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <comericaworks.com> (the "Domain Name") is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2018. On April 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 2018 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 the same day.
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 the Respondent of the Complaint, and the proceedings commenced on April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2018.
The Center appointed Ian Lowe as the sole panelist in this matter on May 17, 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
The Complainant is a financial services company whose headquarters are in Dallas, Texas, United States. It has carried on business under the name Comerica since 1982 and as of December 31, 2017 was among the 35 largest United States banks with assets of over USD 71 billion.
The Complainant is the registered proprietor of many United States trademarks comprising "Comerica" including registration no. 1251846 COMERICA registered on September 20, 1983 and registration no. 1776041 COMERICA and device registered on June 8, 1993. On January 3, 2018, the Complainant applied to register the mark COMERICA WORKS as a United States trademark.
The Domain Name was registered on January 6, 2018. At the time of preparation of the Complaint on April 4, 2018, the Domain Name resolved to a parking page offering the Domain Name for sale at a price of USD 950. The Domain Name currently resolves to a parking page which no longer explicitly offers the Domain Name for sale.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its COMERICA trademarks (the "Mark"), that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the Mark, both by virtue of its many trademark registrations and as a result of the goodwill and reputation acquired through its widespread use of the Mark over a number of years. Ignoring the generic Top-Level Domain ("gTLD") ".com", the Domain Name comprises the entirety of the Mark together with the dictionary word "works". In the view of the Panel, this addition does not detract from the confusing similarity between the Complainant's mark and the Domain Name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has no connection with the Complainant and is not authorized in any way to use the Complainant's trademarks. The Panel finds it difficult to conceive of a legitimate purpose to which the Domain Name could be put, comprising as it does the distinctive name of the Complainant (which is also a registered trademark of the Complainant) and the word "works". The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In light of the nature of the Domain Name, and the fact that the Domain Name was registered just three days after the Complainant applied to register COMERICA WORKS as a United States trademark, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. The Respondent has used the Domain Name to offer it for sale at a price significantly in excess of the out of pocket expenses directly related to the Domain Name. The Panel is satisfied in light of the nature of the Domain Name that the Respondent registered the Domain Name with a view to exploiting the Complainant's rights in the Mark, targeting the Complainant. The Panel is satisfied that this amounts to paradigm bad faith registration and use for the purposes 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 Domain Name <comericaworks.com> be transferred to the Complainant.
Date: May 30, 2018