WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Bank v. Adex Adex
Case No. D2016-1736
1. The Parties
The Complainant is Comerica Bank of Dallas, Texas, United States of America ("United States" or "U.S.") represented by Bodman PLC, United States.
The Respondent is Adex Adex of Bangalore, India.
2. The Domain Name and Registrar
The disputed domain name <comerica-online.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 24, 2016. On August 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2016, 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 September 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2016.
The Center appointed James A. Barker as the sole panelist in this matter on October 6, 2016. 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 headquartered in Dallas, Texas, United States. As of June 30, 2016, the Complainant was among the 35 largest U.S. financial and bank holding companies and had over USD 71 billion in assets. The Complainant has bank locations in a number of other cities in the United States, as well as in Canada and Mexico.
The Complainant is the owner of a number of registered marks which prominently include the term "comerica", registered in relation to banking services. These include U.S. trademark COMERICA, Reg. No. 1,251,846, registered on September 20, 1983.
The Complainant is also the registrant of domain names that incorporate its mark, including <comerica.com> and <comericawebbanking.com>.
The disputed domain name was registered by the Respondent on July 29, 2016, as confirmed by the Registrar. At the date of this decision, the disputed domain name did not resolve to an active website.
In the absence of a Response, the nature of the Respondent and its activities are unknown.
5. Parties' Contentions
The Complainant says that its registered marks (for simplicity, referred to as "the Complainant's mark" below) are coined and distinctive. The Complainant invests millions of dollars every year in the promotion of the products and services identified by its mark. For support, the Complainant refers to a series of prior decisions under the Policy in which the then panels concluded that the Complainant had established rights in its mark. These include, for example, Comerica Bank v. Isaac Goldstein, WIPO Case No. D2015-1997, in which the panel stated that:
"The Panel agrees that the Complainant has extensively established that it has prior trademark rights in the Mark, which is coined, distinctive, powerful and widely known as recognized in Comerica Bank v. Rodica Ilea, WIPO Case No. D2013-1861 and in Comerica Bank v. Host Master, Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2014-0735."
The Complainant says that the disputed domain name is identical or confusingly similar to its mark because it incorporates the Complainant's mark in its entirety and is not made distinctive by the inclusion of a hyphen and the word "online". By reference to paragraph 1.9 of the WIPO Overview on WIPO Panel Views on Selected UDRP Questions, Second Edition, the Complainant argues that the mere addition of non-distinctive text to the Complainant's mark constitutes confusing similarity. Other UDRP panels have found that the word "online" preceded by a hyphen to be non-distinctive text, but also that the inclusion of that word "is likely to confuse Internet users into regarding the disputed domain name as an official online location of the Complainant": referencing Sberbank v. Alex Aleksandrov, WIPO Case No. D2016-0431.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name, and there is no evidence that the Respondent has been known by the disputed domain name. The Complainant has not granted the Respondent a license or other authorization for that purpose. There is no evidence that the Respondent has either actually used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent has a history of using domain names that incorporate the Complainant's mark and of operating phishing attacks against the Complainant's online banking customers.
Lastly, the Complainant says that the disputed domain name was registered and has been used in bad faith for a number of reasons:
- Because of the Complainant's large presence in the United States and the long period of prior registration of the Complainant's mark, the Respondent must have known of the Complainant's rights in its mark when the disputed domain name was registered.
- When a domain name contains a well-known mark such as COMERICA, no other action is required for a finding of bad faith. In this respect, the Complainant refers to past cases in which UDRP panels found that a respondent had actual or constructive knowledge of a complainant's mark.
- The Respondent has provided false contact details in the WhoIs record, namely the given name and family name of the Respondent are both identified as "Adex" and there is no street number included in the mailing address.
- The Respondent has no connection with the Complainant or plausible use of disputed domain name that would not infringe the Complainant's intellectual property rights.
- The Respondent has engaged in a pattern of conduct of improperly registering and using domain names that incorporate the Complainant's mark. The Complainant refers to parallel UDRP proceedings to these ones, involving similar facts. The Complainant says that in each case the Respondent has operated websites that that average user would believe were operated by the Complainant.
- The disputed domain name does not currently resolve to a website but once resolved to a website with the same look and feel of the Complainant's website and the disputed domain name was used to operate an illegal phishing attack.
- The current passive holding of the disputed domain name constitutes bad faith.
- The Respondent's failure to respond to the Complainant's cease-and-desist letter is further evidence of bad faith.
The Complainant asks for the disputed domain name to be transferred to it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed the Complainant must establish that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of these elements are addressed in turn as follows.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that it has trademark rights and the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
There is no doubt that the Complainant has relevant trademark rights. The Complainant provided evidence of its rights in registered trademarks for COMERICA and COMERICA BANK. Those rights have also been recognized in a number of previous decisions under the Policy, including those cited above.
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to the Complainant's registered mark for COMERICA. The disputed domain name contains that mark in its entirety and adds only a hyphen and the word "online". It is well established that the inclusion of a distinctive mark in a domain name is sufficient for a finding of confusing similarity. The inclusion of the hyphen in the disputed domain name is trivial. The inclusion of the descriptive term "online" does nothing to distinguish the mark. Rather, the inclusion of that term may add to potential confusion, as it obviously suggests a reference to online services offered by the Complainant.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Policy secondly requires that the Complainant prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The consensus view of UDRP panelists, as set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section Edition ("WIPO Overview 2.0"), is that:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name."
The Complainant has established a prima facie case against the Respondent. The Respondent has not responded to that case. There is otherwise no evidence in the available record demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.
Accordingly, in the absence of a Response the Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that the disputed domain name has been both registered in bad faith and is being used in bad faith.
The Panel considers that this case presents a relatively blatant example of bad faith by the Respondent. As noted above, the Complainant's mark is distinctive, well-known, and entirely incorporated in the disputed domain name, and combined with a term apparently designed to reinforce confusion with the Complainant's mark. The Panel considers it unlikely that this was an accident. Further, the WhoIs details appear to contain "made up" contact details, as noted by the Complainant above. The disputed domain name does not appear to have been used in connection with any bona fide offering of goods or services, or any other potentially good faith use.
The Respondent has not replied with any case to the contrary. The consensus view is that a respondent's default does not automatically result in a decision in favor of complainant. See WIPO Overview 2.0, paragraph 2.2. This said, a respondent default, combined with apparent blatant bad faith, would usually point to a relatively quick finding in a complainant's favor on this point. This is supported by paragraph 14(b) of the Rules, which provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
The Complainant makes a number of other allegations against the Respondent in connection with its allegation of bad faith. The Panel has not considered it necessary to consider those allegations in detail, as the matters outlined above are sufficient for a finding under this element 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 <comerica-online.com> be transferred to the Complainant.
James A. Barker
Date: October 20, 2016