WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Abdul Bhuiyan, ABD
Case No. D2021-1208
1. The Parties
Complainant is Comerica Bank, United States of America (“United States” or “U.S.”), represented by Bodman PLC, United States.
Respondent is Abdul Bhuiyan, ABD, United States.
2. The Domain Name and Registrar
The disputed domain name <my-comerica.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2021. On April 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on May 20, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 25, 2021. 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, United States. As of December 31, 2020, Complainant was among the 35 largest U.S. banks and had over USD 88 billion in assets. In addition to Texas, 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. Complainant has used the COMERICA trademark in the United States since 1982, and has secured numerous registrations in the United States and in other jurisdictions for the COMERICA mark (e.g. U.S. registration No. 1,251,846, registered on September 20, 1983) and other COMERICA-formative marks. Prior UDRP panels have found Complainant’s COMERICA mark to be well-known. See, e.g., Comerica Bank v. Kerry Fritz II, www.bankoftheplanetearth.com, WIPO Case No. D2017-2498. Complainant owns domain names corresponding to its COMERICA mark, including <comerica.com>, <comerica.net>, and <comerica.org>.
Respondent registered the disputed domain name <my-comerica.com> on March 31, 2021. The disputed domain name has redirected to the domain name <zuzazi.net>, which hosted a clone website of Complainant’s legitimate website located at its <comerica.com> domain name. Respondent has also sent phishing text messages directing recipients to the disputed domain name.
5. Parties’ Contentions
Complainant asserts that that disputed domain name is confusingly similar to Complainant’s COMERICA trademark. According to Complainant, the disputed domain name incorporates the mark exactly and merely adds the word “my” at the beginning of the mark, which does not obviate confusing similarity.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent cannot have rights or legitimate interests in the disputed domain name because Complainant had established trademark rights prior to the registration of the disputed domain name. Complainant asserts that it has not granted the Respondent a license or otherwise permitted the Respondent to use the COMERICA mark or the disputed domain name. According to Complainant, there is no evidence of 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, as the disputed domain name merely redirected to a clone website of Complainant’s own website, including use of Complainant’s copyrighted images to pass itself off as Complainant. According to Complainant, Respondent did or planned to use the disputed domain name to obtain the sensitive financial information of unsuspecting consumers, including through a text message phishing, or “smishing”, scam. Complainant also notes that there is no evidence that Respondent has been commonly known by the disputed domain name.
Complainant asserts that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent knew or should have known that the disputed domain name was confusingly similar to Complainant’s COMERICA mark given that the mark is well-known and has been in longstanding use well before Respondent registered the disputed domain name. Complainant asserts that Respondent used the disputed domain name in bad faith Respondent given that the disputed domain name merely redirects to a clone of Complainant’s website and Respondent is engaging in fraud and phishing targeted at Complainant’s customers through a smishing campaign drawing users to the website at the disputed domain name. Complainant also notes that it sent a cease and desist letter to Respondent on April 1, 2021, but that Respondent gave no response. According to Complainant, Respondent is utilizing the COMERICA mark within the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the mark as to the source, sponsorship, affiliation, or endorsement of the website, that Respondent’s action of registering the disputed domain name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant’s business and deceive consumers, and that Respondent’s actions constitute a blatant attempt to misappropriate the Complainant’s well-established, famous mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the COMERICA mark through its United States and various other registrations.
With Complainant’s rights in the COMERICA mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name fully incorporates the COMERICA mark. The addition of the dictionary term “my” and a hyphen before the mark in the disputed domain name does nothing to prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its COMERICA mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, 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 (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the COMERICA mark in any way. There is no evidence suggesting that Respondent is commonly known by the disputed domain name. Respondent also does not appear to be using the disputed domain name in connection with any bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the disputed domain name. Respondent used the disputed domain name to direct Internet users to a website intended to mimic that of Complainant, ostensibly to capitalize on misdirected Internet traffic to this imposter website. The evidence on record suggests that Respondent used the disputed domain name in connection with a smishing scheme intended to obtain sensitive information from misdirected Internet users. The use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence regarding its longstanding and widespread use of the well-known COMERICA mark which long predates Respondent’s registration of the disputed domain name. Complainant also provided evidence showing that Respondent was attempting to impersonate Complainant to conduct a fraudulent scheme. Therefore, Respondent was undoubtedly aware of Complainant and its rights in the COMERICA mark when he registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Respondent’s registration and use of the disputed domain name not only clearly indicate full knowledge of Complainant’s COMERICA mark, but also an attempt to misleadingly divert consumers for Respondent’s own commercial gain through its fraudulent activities. See Policy, paragraph 4(b)(iv). Such activity also disrupts Complainant’s business within the meaning of Policy paragraph 4(b)(iii).
The use of the disputed domain name in connection with a fraudulent smishing scheme is the type of illegal activity that is manifestly considered evidence of bad faith under the Policy. See WIPO Overview 3.0, section 3.1.4; Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group, WIPO Case No. D2018-0717.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was 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, <my-comerica.com>, be transferred to Complainant.
Brian J. Winterfeldt
Date: May 31, 2021