WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. WhoisGuard Protected / Ramon Quintanilla
Case No. D2019-1511
1. The Parties
The Complainant is Comerica Bank, United States of America (“United States” or “U.S.”), represented by Bodman PLC, United States.
The Respondent is WhoisGuard Protected, Panama / Ramon Quintanilla, United States.
2. The Domain Name and Registrar
The disputed domain name <comericapestcontrol.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2019. On June 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 28, 2019, 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 July 1, 2019, 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 July 1, 2019.
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 July 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2019. The Response was filed with the Center on July 24, 2019.
The Center appointed Ellen B Shankman as the sole panelist in this matter on July 29, 2019. 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 date of the Domain Name registration was confirmed by the Registrar to be January 10, 2019.
The Complainant provided evidence of multiple trademark registrations for the mark COMERICA including, inter alia, United States Registration No. 1251846 (registered on September 20, 1983) and COMERICA United Sates Registration No. 1776041 (and Design) (registered on June 8, 1993), and United Sates Registration No. 2434031 for COMERICA PARK both for word marks logos, that predate the date of the Domain Name registration, for “banking services” and “providing stadium facilities for sports and recreational activities”.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and requests users to do a “robot check” as part of a security check on the website, which then resolves to an active website regarding ‘pest control’.
5. Parties’ Contentions
The Complainant is a financial services company headquartered in Dallas, Texas, U.S. As of March 2019, the Complainant was among the 35 largest U.S. banks and had approximately USD 70.6 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 in the U.S., as well as in Canada and Mexico. The Complainant is also widely known for its sponsorship of the Detroit Tigers Major League Baseball stadium, Comerica Park, in Detroit, Michigan, U.S.
The Complainant bases this Complaint on the Complainant’s rights in its trademark, COMERICA (“the Mark”). The Complainant is the owner of numerous United States registrations and applications for its trademarks and service marks. The trademark COMERICA serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions world-wide. The Mark is a well- and widely-known mark that has been in use in connection with the Complainant’s banking services since 1982. The Mark has been incorporated into many other marks used and registered by the Complainant.
The Complainant invests millions of dollars every year in the promotion of the products and services identified by the Mark. Among its many widespread and prominent promotional activities, the Complainant sponsors the Major League Baseball stadium in Detroit, Michigan, U.S. - Comerica Park. The sponsorship, valued at USD 66 million, began in 1998 and is extended through 2034.
As a result of its long use and widespread commercial recognition, the Complainant alleges that the Mark is famous under the United States federal and state trademark laws. In addition, the Complainant is the domain name registrant for the domain names <comerica.com>, <comerica.net>, and <comerica.org>, and others that contain the Mark.
The Complainant asserts that it has not granted the Respondent a license or otherwise permitted the Respondent to use the Mark or to register or use the Domain Name. There is no evidence that the Respondent has been commonly known by the Domain Name. In fact, in correspondence with the Complainant’s counsel, the Respondent admitted that he named his “company” after the Comerica Park baseball stadium where the Detroit Tigers of Major League Baseball play.
The Complainant argues that the Domain Name was registered in bad faith by the Respondent in admitting that Comerica Pest Control was named after Comerica Park, a trademark owner by the Complainant, and that the statement is an explicit admission from the Respondent that it intends to trade on the goodwill associated with the Mark.
Further, even if the Respondent did not have actual knowledge of the Complainant’s mark, it can be charged with the constructive knowledge at the time of registration of the Domain Name because of the Complainant’s large presence in the U.S., Canada, and Mexico. The Complainant contends that when a domain name contains a well-known mark such as COMERICA, or a misspelling thereof, no other action, aside from registering the domain name is, required for a finding of bad faith.
The Complainant provided evidence of a “cease and desist” demand letter that it sent the Respondent, the continued email correspondence between the Parties that included the Respondent’s legal analysis and rejection of the Complainant’s claim, the Respondent’s admission that he picked the name after Comerica Park in Detroit, Michigan, U.S., and that the Respondent’s request for USD 500 to settle the matter. Further, the Complainant provided screen shots to show that the Respondent now uses “Come Rica Pest Control ” as the name of the pest control company. Since the Respondent offered to transfer the Domain Name for a price that was significantly higher than the cost of registering the Domain Name, the Complainant argues that it can be reasonably concluded that the Respondent registered and used the Domain Name in bad faith.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark COMERICA, in respect of goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the descriptive words “pest” and “control” to the term “comerica” does not prevent a finding of confusing similarity. Therefore, the Domain Name <comericapestcontrol.com> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name is likely to result in a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, and is opportunistic bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent hereby responds to the statements and allegations in the Complaint and respectfully requests the Administrative Panel to deny the remedies requested by Complainant.
The Respondent claims that the Domain Name is not confusing similar because the words “pest control” are descriptive of an industry worth over USD 16 billion according to “www.ibisworld.com/industry-trends/market-research-reports/administration-businesssupport-waste-management-services/administrative/pest-control.html” and there is no risk that Internet users may actually believe there to be a real connection between the Domain Name and the Complainant and/or its goods and services, since these services are in completely different industries.
The Respondent claims that he never stated that he named the company after “Comerica Park baseball stadium”. He stated "Comerica Pest Control was first established in Detroit, Michigan[, U.S.,] and was named after Comerica Park”. The Domain Name had a previous owner who ran this pest control company, which can be verified using the WhoIs history (which was not provided).
The Respondent claims that he has data from Google, going back to March before this dispute was filed, that shows he is using the Domain Name for pest control services. The Respondent claims that the data Google provides also shows that none of the visitors to the Domain Name used any variation of "comerica" to find the Domain Name, all the searches used in Google were related to pest control services. The Respondent further argues that the Domain Name redirects any internet traffic that is not located in the state of Arizona to a generic pest control landing page, since this Internet traffic is allegedly outside of the Respondent’s area and thus he cannot provide any services, and which was also setup to reduce hackers and spam.
The Respondent claims that the “Google My Business” listing for “Come Rica's Pest Control” required that the address be hidden, as per Google's guidelines for service-based businesses, but that the Respondent could provide it as needed.
The Respondent claims to never have offered to sell the Domain Name, and has had no interest in selling the Domain Name. The Respondent states that he is asking for compensation for the money spent on a marketing company, in which the Respondent alleges to have “currently spent over [USD] 2000 in marketing for [the Domain Name]” and claims he can provide receipts if needed. The Respondent claims that he is not redirecting any of his potential customers to another website, only users out of his service area, which is the state of Arizona. The Respondent claims that they did not purchase the Domain Name for the purpose of selling it to the Complainant, and he has also purchased other non-branded pest control domains. The Respondent argues that “[t]hese domains have only the city+pestcontrol in the domain name and are targeting the Phoenix metropolitan area, the same area that Come Rica Pest Control is targeting”.
To summarize the response, the Domain Name is not confusingly similar to the Complainant’s Mark, the Respondent is entitled to use the Domain Name, and the Domain Name was not registered or being used in bad faith.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for COMERICA.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the dictionary terms “pest” and “control” to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “[t]he incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
The burden of production shifts to the Respondent. By his own admission, the Respondent stated that he picked the name after the Comerica Park. Notwithstanding the Respondent’s claim buried in legal jargon that he’s entitled to use the mark because it is in a different field, the Panel finds that this does not provide the Respondent with a legitimate interest in or right to the Domain Name. In short, as Shakespeare put it so eloquently in Hamlet, the Respondent is “hoist with his own petard”.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark COMERICA and the Panel finds that that the Respondent is using the Domain Name opportunistically to benefit financially from the Complainant’s trademark.
Thus, the Panel finds that the Respondent’s use of the Domain Names creates confusion as to the source of the Domain Name in an attempt to trade on the goodwill associated with the Complainant’s trademark. A respondent’s use of a complainant’s mark - for said respondent’s commercial benefit - to attract Internet users otherwise seeking said complainant evinces a finding of bad faith, as per paragraph 4(b)(iv) of the Policy, and is consistent in this case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4, which states:
“[p]anels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”
The Panel finds the Respondent’s claim that it is now called “Come Rica Pest Control” – especially after the admission that the company was named after the Comerica Park baseball stadium – disingenuous. Further, by the Respondent’s own logic, the explanation of the choice of the Domain Name fails: if the domain names purchased are done so to reflect a “city” plus “pest control”, as the Respondent argues, then the Domain Name should be called “Detroit Pest Control” and not “Comerica Pest Control”, since “Comerica” is the name of a stadium sponsored by the Complainant. The Panel also rejects the Respondent’s claim that he is free to use another’s trademarks because it is in relation to a different lucrative field of endeavor.
In the circumstances, the Panel infers that the Respondent registered and has used the Domain Name with the intention of unfairly profiting from the Complainant’s goodwill. This conduct constitutes registration and use of the Domain Name in bad faith for the purpose of the Policy.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the Respondent’s reply to the Complainant’s request for voluntary transfer of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 <comericapestcontrol.com> be transferred to the Complainant.
Ellen B Shankman
Date: August 1, 2019