WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Private Registration, WhoisGuardService.com
Case No. D2014-0529
1. The Parties
The Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America (the "United States").
The Respondent is Private Registration, WhoisGuardService.com of Nanjing, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <comericaonline.com> (the "Disputed Domain Name") is registered with Nanjing Imperiosus Technology Co. Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2014. On April 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 3, 2014, 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. On April 14, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On April 16, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2014.
The Center appointed Kar Liang Soh as the sole panelist in this matter on May 19, 2014. 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 founded in Dallas, Texas over 160 years ago. As of December 31, 2013, it is among the 40 largest Untied States holding companies with USD 65.4 billion in assets. Over the years, the Complainant has expanded its business operations in the United States to countries abroad, including Canada and Mexico.
The Complainant uses the trademark COMERICA on banking services and owns several trademark registrations comprising the word COMERICA in the United States, including the following:
September 20, 1983
COMERICA (and Design)
June 8, 1993
The Complainant is also the registrant of various domain names including <comerica.com>, <comerica.net> and <comerica.org>. The COMERICA mark and other related family marks are applied throughout the Complainant's websites resolved from the said above domain names.
The Respondent is a provider of domain name privacy services based in China. The Registrar refused to provide information regarding the "beneficial registrant", for lack of a better word, without a court order.
The Disputed Domain Name was registered on April 2, 2012. As of February 18, 2014, the Disputed Domain Name resolved to a holding website which offered sponsored listings and links to other websites. The trademark COMERICA is used as a page header (the lone word "comerica"), as part of a page header (as part of "Comericaonline.com"), a link to "Comerica Bank Locations", and various allegedly "Sponsored Listing" to "COMERICA BANK".
5. Parties' Contentions
The Complainant contends that:
(a) The Disputed Domain Name is confusingly similar to the COMERICA trademark. The COMERICA trademark is registered in the United States and has widespread commercial recognition as a result of long use. The only difference between the Disputed Domain Name and the COMERICA trademark is the addition of the suffix "online" in the Disputed Domain Name which is descriptive in nature and does not serve to distinguish the Disputed Domain Name from the COMERICA trademark.
(b) The Respondent has no rights or legitimate interests in respect of the Dispute Domain Name. There is no evidence that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is commonly known by the Disputed Domain Name. The Complainant has not licensed or permitted the Respondent to use the COMERICA trademark and the Respondent does not own any intellectual property rights in the trademark. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name; and
(c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent must have known of the Complainant's rights in the COMERICA trademark when registering the Disputed Domain Name. The Disputed Domain Name resolves to a webpage which evidences that the Respondent intentionally attempted to attract for commercial gain, Internet users by creating a likelihood of confusion with the COMERICA trademark as to source, sponsorship, affiliation, or endorsement of the Respondent's website or product or service therein.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The language of the registration agreement as confirmed by the Registrar is Chinese. As such, the default language of the proceeding is Chinese. Nevertheless, the Panel is entitled to determine that the language of the proceeding otherwise under paragraph 11(b) of the Rules.
The Complainant has requested that English be adopted as the language of the proceeding herein. Having regard to the circumstances, the Panel hereby determines that English be so adopted. In making this determination, the Panel took into account the following factors:
a) The Complaint has already been submitted in English when the language of the registration agreement was not apparent from the public information resources provided by the Registrar. In particular, the evidence shows that the Registrar had published the registration agreement in English without clearly indicating that the registration agreement entered into by the Respondent was not in English;
b) The website resolved from the Disputed Domain Name was entirely in English;
c) The Respondent did not object to the Complainant's request that English be adopted as the language of the Proceeding;
d) The Respondent did not file a response;
e) Insisting that the Complaint be re-filed in Chinese will in all likelihood lead to delay in the proceeding without serving any purpose beneficial to the smooth and expeditious disposition of the proceeding.
It is pertinent to highlight that the registration agreement contains a provision at the end as follows:
"If there is any contradiction between what the Chinese language version of the Terms says and what a translation [English language version] says, then the Chinese language version shall take precedence."
It is apparent to the Panel that there is an English version of the registration agreement as well as a Chinese version. Only the English version of the registration agreement is included in the evidence. This provision governs the contractual relationship between the registrant and the registrar in so far as it relates to the interpretation of provisions which are contradictory between the English version and the Chinese version. It does not change the fact of the language of the registration agreement, which in this case has been factually verified by the registrar to be Chinese.
To succeed in this proceeding, the Complainant must establish the 3 limbs of paragraph 4(a) of the Policy on the facts, which read:
(i) [the Respondent's] 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 Respondent's] domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
By virtue of the trademark registrations for the COMERICA trademark, the Panel agrees that the Complainant has rights over the COMERICA trademark. The Panel also accepts that the only material difference between the Disputed Domain Name and the COMERICA trademark is the addition of the suffix "online" in the Disputed Domain Name. In accordance with the consensus of past UDRP panels, the addition of descriptive suffixes and prefixes to a trademark does not normally serve to distinguish the resulting combination as a domain name from the trademark.
The Panel has no doubt the word "online" is a descriptive word which says nothing more that the Disputed Domain Name is associated with things "online", which being a domain name, naturally serves such a function. The Panel cannot see how the Disputed Domain Name could be distinguished from the COMERICA trademark, and accordingly hold that the Complainant has established that the Disputed Domain Name is confusingly similar to the COMERICA trademark as prohibited by the first limb of paragraph 4(a).
B. Rights or Legitimate Interests
The Complainant has denied licensing or permitting the Respondent to use the COMERICA trademark. As the Complainant rightly pointed out, there is no evidence available in this proceeding that the Respondent is commonly known by the Disputed Domain Name, has rights in the COMERICA trademark, or is making a legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant has accordingly established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. No response having been submitted, the prima facie case stands and the Panel holds that the second limb of paragraph 4(a) has also been made out.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides a non-exhaustive example of bad faith registration and use prohibited by paragraph 4(a), and reads as follows:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The website resolved from the Disputed Domain Name contains multiple uses of the trademark COMERICA. The Respondent must have been well aware of the Complainant and the trademark COMERICA at the time the Disputed Domain Name was registered. Not only was the trademark COMERICA used on the website, a good number of these uses were presented as "Sponsored Listings" and clearly asserting that they enjoyed the sponsorship, whether directly or indirectly, of the Complainant. It is inconceivable that the appearance of the trademark COMERICA on the website is for any purpose other than for attracting Internet users to the website for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of the website.
Therefore, the circumstances lead the Panel to the unequivocal conclusion that the third limb of paragraph 4(a) has been established.
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, <comericaonline.com>, be transferred to the Complainant.
Kar Liang Soh
Date: June 16, 2014