WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compass Bancshares Inc. & Compass Bank v. G Design
Case No. D2007-1192
1. The Parties
The Complainants are Compass Bancshares Inc. and Compass Bank, Birmingham, Alabama, United States of America, represented by Welsh & Katz, Ltd., United States of America.
The Respondent is G Design, Shanxi, China.
2. The Domain name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2007. On August 15, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 15, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 17, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2007.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on September 17, 2007. 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 first Complainant, Compass Bancshares, Inc., owns the following trademarks:
- COMPASS BANK registered in USA on October 18, 1989 No. 1604027 with first use on October 16, 1987;
- C COMPASS BANK registered in USA on May 16, 1995 No. 1894329;
- COMPASS BANK PRIVATE CLIENT SERVICES PRIVATE TRUST registered in US on May 15, 2001 No. 2451239.
Moreover the first Complainant owns several trademarks which incorporate the COMPASS name. All the trademarks are being used in commerce in association with Complainants’ banking and financial services.
The second Complainant, Compass Bank, which is the principal bank subsidiary of the first Complainant, registered the domain name on August 12, 1995 and on March 3, 1996.
The Respondent registered the disputed domain name on August 11, 2004. The disputed domain name is active and redirects Internet users looking for the trademarks of the Complainants to a website which advertises business and financial services.
5. Parties’ Contentions
A. Complainant
The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy is applicable to the domain name subject of this dispute.
In relation to element (i) of paragraph 4(a) of the Policy, the Complainants contend that the domain name in dispute is simply identical or confusingly similar to COMPASS BANK trademarks. It is irrelevant that the Respondent has added one letter “s” from the Complainants’ trademarks, because the confusion between the trademarks and the domain name is not alleviated, but the risk of confusion is instead increased.
The Complainants have right in the COMPASS BANK trademark and this mark has been used in connection with banking and financial services and they registered the domain names and before the Respondent registered the contested domain name.
In relation to element (ii) of paragraph 4(a) of the Policy, the Complainants contend that the Respondent has no rights or legitimate interests in respect to the domain name. The Complainants state that the Respondent does not own any registered or common law trademark containing the terms “compass bank” or any similar derivation. Moreover the Respondent has not been commonly or legitimately known by the contested domain name.
The Complainants have never assigned, licensed or granted permission to the Respondent to commercially utilize its COMPASS BANK trademark or any other trademark that incorporates the famous COMPASS BANK mark.
The Respondent is not making legitimate noncommercial or fair use of the contested domain name. In fact the Respondent used the domain name in dispute to link to websites which advertised banking and financial services.
In relation to element (iii) of paragraph 4(a) of the Policy, the Complainants contend that evidence of bad faith registration and use is established by the following circumstances.
The Respondent at the time of the registration of the contested domain name was surely aware of the trademark of the Complainants taking into consideration that COMPASS BANK marks had been in use for more than fifteen years prior to the Respondent’s registration of the domain name and also that the second Complainant registered as domain name since 1996 and it is using it for an active website that advertised banking and financial services.
The Respondent has been involved at least in four domain name disputes as Respondent and in all of them the contested domain names have been transferred to the Complainant.
The proof of the bad faith of the Respondent is provided by the fact that the Respondent is using the mark to advertise the same services as the Complainants.
The Complainants request the Panel to transfer the disputed domain name to them.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name at issue is a misspelling of the trademarks and domain names of the Complainants.
It is worth noting that the domain name at issue is obtained from the trademarks and domain name registered and used by the Complainants in such a way as it would result from a typing error which is the adding of a third “s” where the words “compass” and “bank” merge.
It is evident that the contested domain name differs from the Complainants trademarks and domain name by one letter, and this circumstance supports the conclusion that the Respondent registered the contested domain name in order to engage in typosquatting. There are several WIPO UDRP decisions which state that in determining similarity between a trademark and a domain name the difference of one letter is not enough to avoid confusing similarity (see e.g., TPI Holdings, Inc. v. LaPorte Holdings, WIPO Case No. D2006-0235; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568).
Moreover, when analyzing the identity or similarity, the suffix, in this case “.com”, should not be considered because it is a necessary component of the domain name and does not give any distinctiveness (see e.g., Cr�dit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).
There is no doubt that the domain name is confusingly similar to the trademarks of the Complainants. Therefore, the Panel finds that Complainants have satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed any response.
There is no indication in the case file that the Respondent has rights or legitimate interests in the domain name. See paragraph 4(c) of the Policy.
Moreover, the Complainants have not licensed or otherwise permitted or authorized the Respondent to use its trademarks or to apply for or to use the domain names incorporating the said marks.
Under these circumstances, and also in view of the Panel’s findings under the third element of the Policy, the Panel finds that the Complainants have satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence presented by the Complainants, the Panel determines that the Respondent registered and used the disputed domain names in bad faith.
The Panel finds that the Respondent registered the contested domain names most probably with knowledge of the Complainants’ rights. Only someone who was familiar with the Complainants’ trademarks and domain names would have registered such confusingly similar domain name.
There is no information as to the business activities of the Respondent that would justify the use of the contested domain name, nor is there evidence of any rights or legitimate interest in said domain name by the Respondent.
Moreover, the Respondent appears to have intentionally misspelled the Complainants’ trademarks to attract Internet users who intend to visit the Complainants’ website at “www.”, but make a typographical error, in order to generate traffic for the Respondent’s own commercial purposes (see e.g., TPI Holdings, Inc. v. LaPorte Holdings, WIPO Case No. D2006-0235; Cr�dit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568).
Finally, the Respondent is no stranger to UDRP proceedings, in fact he has been involved in at least four cases as respondent and in all of them the contested domain names have been transferred to the complainants (see 1-800-F, Inc., Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design,WIPO Case No. D2006-0977; VeriSign Inc. v. Bin g Glu / G Desing,WIPO Case No. D2007-0421; Boehringer Ingelheim Pharma GmbH & Co. KG v. G Design,WIPO Case No. D2007-0569; and Columbia Insurance Company v. G Design,WIPO Case No. D2006-1617).
Taken together with the fact that the Respondent has not filed any Response in this proceeding, the Panel believes that the Complainants have demonstrated that the contested registration was made and is being used in bad faith
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainants.
Nicoletta Colombo
Sole Panelist
Dated: October 1, 2007
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