WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. James Chris
Case No. D2021-1209
1. The Parties
Complainant is Comerica Bank, United States of America (“United States” or “U.S.”), represented by Bodman LLP, United States.
Respondent is James Chris, United States.1
2. The Domain Name and Registrar
The disputed domain name <comeirica.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 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 <comeirica.com> on March 21, 2021. At the time the Complaint was filed, the disputed domain name resolved to a blank page at the sub-domain <red.comeirica.com>.
5. Parties’ Contentions
Complainant asserts that that disputed domain name is confusingly similar to Complainant’s COMERICA trademark. According to Complainant, it is confusingly similar to the mark because it is an obvious misspelling of, and phonetic equivalent to, COMERICA. According to Complainant, the disputed domain name merely adds an additional letter “i” between the “e” and “r” in the mark. Complainant asserts that obvious and intentional misspellings of a trademark are considered confusingly similar for purposes of the first element of a UDRP complaint.
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 Respondent a license or otherwise permitted 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 previously redirected to a clone website of Complainant’s own website, and currently resolves to a blank page following previous enforcement action by Complainant against 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, which represents an attempt to “typosquat” on Complainant’s mark. Complainant asserts that Respondent used the disputed domain name in bad faith given that the disputed domain name originally resolved to a clone of Complainant’s website in an effort to engage in fraud and phishing targeted at Complainant’s customers and that such website was disabled by the web host upon notice from Complainant. Complainant also notes that it sent a cease and desist letter to Respondent on March 30, 2021, but that Respondent gave no response. According to Complainant, Respondent is utilizing a confusingly similar variation of 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 Complainant’s business and deceive consumers, and that Respondent’s actions constitute a blatant attempt to misappropriate 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;
(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 consists of an obvious typographical variation of the COMERICA mark, in which an extra letter “i” is inserted between the “e” and “r in the mark. This variation does nothing to prevent a finding of confusing similarity under the first element.
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 a 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. At the time the Complaint was filed, the disputed domain name merely resolved to a blank page located at the sub-domain <red.comeirica.com>. Complainant alleged that the disputed domain name previously resolved to a website mimicking Complainant’s own legitimate website but did not include evidence of same with its Complaint, beyond a mention in an internal email included as part of Annex 12 to the Complaint that “comeirica[.]com was active and sent for takedown yesterday.”
Nonetheless, based on the evidence on record, Respondent is not making any bona fide commercial or legitimate noncommercial or fair use of the disputed domain name. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of the 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. Therefore, Respondent was likely 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.
Based on the evidence on record, Respondent was previously making some use of the disputed domain name, purportedly to direct Internet users to a website mimicking Complainant’s own website, and after intervention by Complainant to the relevant web host, such content was disabled at which time the disputed domain name began resolving to a blank page located at the sub-domain <red.comeirica.com>. The Panel notes that as of the writing of this decision, the disputed domain name appears to once again resolve to an active website located at the same sub-domain, on which Respondent is advertising various financial services under the name “Trade Concept”. Such use of the disputed domain name, which as established above is confusingly similar to Complainant’s COMERICA mark, is clearly designed to misleadingly divert consumers to Respondent’s website located at the disputed domain name for Respondent’s own commercial gain. See Policy, paragraph 4(b)(iv). Such activity also disrupts Complainant’s business.
Even if Respondent had not resumed active use of the disputed domain name and it continued to resolve to a blank page following a takedown notice to the web host, as indicated by Complainant and supported in the record, such use of the disputed domain name would still constitute use in bad faith. “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” WIPO Overview 3.0, section 3.3. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Id. The passive holding doctrine applies in this case given the distinctiveness of Complainant’s mark, Respondent’s failure to come forward with any evidence of a conceivable good faith use for the disputed domain name, Respondent’s concealment of his identity through a privacy service at the time of registration of the disputed domain name, and the implausibility of any conceivable good faith basis to which the disputed domain name could be put by Respondent. The Panel finds it more likely that Respondent selected the disputed domain name with the intention of taking advantage of Complainant's reputation by registering a domain name containing an obvious typographical variation of Complainant’s mark with the possible intent to ultimately use the disputed domain name for an illegitimate purpose, such as to attract Internet users to the online location for Respondent’s commercial gain. See e.g. Koc Holding A.S. VistaPrint Technologies Ltd., WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi / "Madonna.com", WIPO Case No. D2000-0847).
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name has been 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 <comeirica.com> be transferred to Complainant.
Brian J. Winterfeldt
Date: June 4, 2021
1 Annex 1 to the Complaint shows that the Respondent registered the disputed domain name through the privacy protection service.