WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Yunus Basar
Case No. D2020-0904
1. The Parties
The Complainant is Comerica Bank, United States of America (the “United States”), represented by Bodman PLC, United States.
The Respondent is Yunus Basar, Turkey.
2. The Domain Name and Registrar
The disputed domain name <trixtoncomerica.com> (“Disputed Domain Name”) is registered with DropCatch.com 1267 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2020.
The Center appointed Nicholas Weston as the sole panelist in this matter on May 12, 2020. 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 operates a New York Stock Exchange (NYSE) listed financial services business in the United States, Canada and Mexico with revenue exceeding USD 3.8 billion in 20191 . The Complainant owns registrations for the mark COMERICA which it uses to designate banking and financial services. United States Trademark Registration No. 1,251,846, for example, for the mark COMERICA, was registered on September 20, 1983.
It also owns the domain name <comerica.com> registered on September 19, 1995, and the domain names <comerica.net> and <comerica.org> both registered on February 9, 1998.
The Disputed Domain Name <trixtoncomerica.com> was registered on February 24, 20202 , which resolved to a parking web page that includes links to websites of the Complainant’s competitors in the financial services industry.
5. Parties’ Contentions
The Complainant cites its United States trademark registration No. 1,251,846, registered in 1983 and numerous other registrations around the world, for the mark COMERICA as prima facie evidence of ownership.
The Complainant submits that the mark COMERICA is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <trixtoncomerica.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the COMERICA trademark and that the similarity is not removed by the addition of the word “trixton”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a passively held landing page and “the only uses of the domain were to offer it for sale and provide a parking page of links”. The Complainant also submits that the choice of the word “trixton” is a reference to an attempted fraud by a third party that used that name to solicit investments by claiming a false affiliation with the Complainant, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and the “well and widely known” Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(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 Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark COMERICA in numerous countries including where the Respondent appears to be located, the United States, pursuant to trademark No. 1,251,846, registered in 1983. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the COMERICA trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) the word “trixton”; (b) an exact reproduction of the Complainant’s trademark COMERICA; (c) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “trixtoncomerica”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the word “trixton”. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033);
This Panel finds the Complainant’s trademark is recognizable within the Disputed Domain Name, and that the addition of the word “trixton”, is insufficient in itself to avoid a finding of confusing similarity to the Complainant’s mark under the first element (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends, prima facie, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, the Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark, there is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or that the Respondent has any rights or legitimate interests in the name “trixton.” The Complainant’s evidence is that “the only known uses of the “trixton” name are in association with a fraud and phishing scam carried out at <trixtonwealth.com>, which targeted customers and potential customers of the Complainant by trading on the goodwill of the Comerica brand to obtain money and other personal information of consumers…(by)…solicit(ing) consumers to open savings accounts or purchase certificates of deposit.”
On any objective view, there are no circumstances on the case file showing that the Respondent has rights or legitimate interests in a domain name incorporating the Complainant’s trademar COMERICA.
In the absence of a response, the Complainant’s prima facie case remains unrebutted, and so this Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting Internet users, it can be inferred that the Respondent is opportunistically using the Complainant’s mark in order to attract Internet users to its webpage containing links to competitors of the Complainant and has been using the Disputed Domain Name to divert Internet traffic.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, this Panel accepts the Complainant’s uncontested evidence that “Respondent has actual knowledge of Complainant and the Marks” and infers from the prior association of the word “trixton” with the Complainant’s trademark COMERICA that the Respondent was well aware of the Complainant. (See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, which held that the domain name in question was “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith”). This Panel also accepts, as the basis of a finding of bad faith, that the evidence is that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s trademark and businesses (see: Bechtel Group, Inc. v. Registration Private, Domains By Proxy, LLC / I S, ICS INC, WIPO Case No. D2017-1127; Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765 “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”).
Further, in the absence of a reasonable explanation, a gap of years between registration of a Complainant’s trademark and a Respondent’s registration of a disputed domain name (containing the trademark) can support an indication of bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name 37 years after the Complainant established registered trademark rights in the COMERICA mark. In view of the composition of the Disputed Domain Name, the Panel finds it highly probable that the Respondent knew of the Complainant’s trademark, and had it in mind at the time of registration.
On the issue of use, the evidence is that the Disputed Domain Name resolves to a webpage unconnected with any bona fide supply of goods or services by the Respondent. The Panel finds that the evidence does support a finding that the Respondent has registered the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark, by: (i) seeking to cause confusion for the Respondent’s commercial benefit, including the display of links to the Complainant’s competitors; (ii) the lack of the Respondent’s own rights to or legitimate interests in the Disputed Domain Name; (iii) the lack of any form of disclaimer; and (iv) the absence of any conceivable good faith use (see WIPO Overview 3.0, section 3.1.4).
The diversion of Internet users is also a common example of bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark COMERICA and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain and deceive consumers interested in searching for information about the so-called “Trixton” phishing scam that was visited on the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Disputed Domain Name <trixtoncomerica.com> be transferred to the Complainant.
Date: May 26, 2020
1 According to the Wikipedia entry for Comerica Incorporated reviewed by this Panel on May 21, 2020.
2 According to https://whois.net searched by this Panel on May 21, 2020