The Complainant is Comerica Incorporated of Detroit, Michigan, United States of America, represented internally.
The Respondent is Whois Privacy Service of Shanghai, the People’s Republic of China1. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2011. On April 26, 2011, the Center transmitted by email to F. a request for registrar verification in connection with the disputed domain name. On April 27, 2011, F 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2011. The Response was filed with the Center on May 19, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on May 25, 2011. 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 facts relevant to the findings and decision in this case are that:
- The Complainant provides banking and other financial services.
- Those services have been offered under the name COMERICA which it has registered as a trade mark.
- The disputed domain name was registered on November 26, 2005.
- There has been no commercial or other relationship between the parties.
- At the time the Complaint was filed, a website corresponding with the disputed domain carried multiple links to third party financial institutions and financial services providers.
- The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in COMERICA and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith. B. Respondent
The Respondent broadly denies those allegations.
In particular, the Respondent submits that “[t]he domain consists of separate English words none of which are included in the mark ‘Comerica’.”
The Respondent argues that the disputed domain name is being used for a bona fide offering of goods or services. It states that:
“The domain has been parked and adverts automatically optimised to the interests of visitors to the domain are being shown. In our opinion the parked page is providing a service to visitors to the domain by giving them the opportunity to click on advertisements for goods and services that might interest them.”
As to the allegation of bad faith, the Respondent reasons that:
“Certain panelists appear to view investment in domain names as inherently bad faith. Their perspective appears to be that any value associated from an undeveloped domain must be due to a parasitic attempt to profit from the legitimate development activity of others. Therefore in a dispute where the Complainant is actively making use of a term while the Respondent is merely parking a domain similar to that term, then the inference is drawn that the parking activity is a bad faith attempt to profit from the Complainant’ s business activities. The panelists who hold this view do not appear to give credence to the possibility that domains have inherent value due to their generic meaning, or that these generic domains will attract direct navigation traffic. […] The website displays different adverts depending on the time it is viewed and the location of the visitor. Of course some of the adverts show products or services related to those of Comerica. However an Internet user viewing the parked website could not be in any doubt that this was an unofficial website. ” 6. Discussion and Findings A. Preliminary procedural issue
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition2 asks at paragraph 4.9: Who is the proper respondent in a case involving a privacy or proxy registration service? In its answer to that question it notes that “there is wide recognition among panels that a complainant or provider who has correctly sent a UDRP case-communication to the WhoIs-listed registrant of record for a disputed domain name will (at least in the absence of better information) normally have discharged its communication responsibility under the UDRP Rules”.
In this case, there is no indication that the Complainant knew or might have reasonably ascertained the identity of any underlying registrant. In response to a request from the Center for registrant verification, the concerned registrar did not disclose an underlying registrant of the disputed domain name that differed from the privacy registration service which appeared in the WhoIs at the time the Complaint was filed. Nor in the evidence is there any other indication of the identity of an underlying registrant. Whilst a Response was filed, it was said to be filed by the “Domain Administrator”.
In the absence of any indication that the Complainant might have more appropriately moved against another party and given the fact that a timely Response purporting to defend the registration was received by the Center, the Panel is satisfied that it was and is proper for the Complainant to name the Respondent as has been done.
Accordingly, moving to the substantive matters dealt with in paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
Having considered the Complaint and the available evidence, the Panel finds the following: B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy. The Complainant has trade mark rights in COMERICA acquired through registration.3 In addition, for the purposes of the Policy, the Panel finds that the Complainant has unregistered rights in the trade mark acquired through use and reputation.4
The remaining question is whether the disputed domain name is confusingly similar to the Complainant’s trade mark. For the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.5 The disputed domain name then differs from the trade mark, firstly, by the addition of the word “bank” and the insertion of the letter “a”, these being on the whole non-distinctive. Countless earlier decisions under this Policy have held that the addition of a non-distinctive integer such as “bank” or “a” to a trade mark does little to avoid confusion. Moreover, the Panel is of the opinion that the trade mark would be readily perceived in the disputed domain name by most people.
The Panel finds that, in overall resemblance, the disputed domain name is confusingly similar to the Complainant’s trade mark and so finds that the Complainant has satisfied the first limb of the Policy. C. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests6.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not.
The Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Counter indications arise from the evidence provided by the Complainant of a website corresponding with the disputed domain name which carries a link farm to third party financial institutions and financial services providers.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The disputed domain name is parked. The Respondent recognizes that advertisements are “automatically optimised to the interests of visitors to the domain are being shown”. The Respondent seeks to establish its bona fide by arguing that “the parked page is providing a service to visitors to the domain by giving them the opportunity to click on advertisements for goods and services that might interest them”.
Whilst the Respondent might indeed be correct that visitors could be interested in the automatically generated advertisements, it seems not to appreciate the cardinal fact that such an interest cannot be generated by use of another’s trade mark, least of all a trade mark with a reputation in a field of business to which those advertisements of third party services relate. The Respondent is, as it states, free to spark that interest by use of a generic domain name, however in circumstances where the trade mark COMERICA is known and registered, the Panel is unwilling to recognize use of the words “go America bank” on the website to which the disputed domain name resolves as good faith use of a domain name that is confusingly similar to the Complainant’s trade mark for the purposes of paragraph 4(c)(iii) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. 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 Respondent attempts to align itself with the good faith use by domainers who restrict themselves to the use and registration of purely generic terms. It is fair to say that the great majority of UDRP panels have recognized the legitimacy of business models premised on the registration, use and sale of domain names having purely generic appeal. Equally dominant is the consensus view of the majority (followed by this Panel) that good faith use of that kind requires vigilant avoidance of the registration or use of domain names which might be confusingly similar to third party trade marks.
In this instance the Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy in that the Respondent (either directly or through the action of others for whom it is vicariously responsible) has intentionally used the disputed domain name to attract, for commercial gain, Internet users to a web site or on-line location, by creating the requisite likelihood of confusion with the Complainant’s trade mark. 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 disputed domain name be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Dated: June 1, 2012
1 See discussion below at Section 6A.
2
3 The Complainant is lacking essential detail of the Complainant’s registered rights. Exhibit 3 to the Complaint merely lists Complainant’s trade marks by name. There is no indication of jurisdiction, registration status, proprietorship, or images of composite marks which include device elements. The Complainant might have failed were it not for the fact that the body of the Complaint makes reference to USPTO trade mark registration 1,251,846. The Panel has discretion to make limited research of its own volition in order to ascertain factual matters. The Panel has used the USPTO’s TARR service and determined that registration 1251846 is valid and subsisting. It is for the word mark COMERICA, was filed on September 13, 1982 and has been renewed. It stands in the name of the Complainant. The Complainant would be well cautioned to provide proof of such entitlement in any later UDRP proceedings. See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
4 It is alleged (and not contested) that the trade mark has been used continuously since 1982 and that in the 2010 financial year the Complainant controlled assets in excess of USD53 billion. It is said that the Complainant is amongst the 25 largest US banking institutions.
5 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
6 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.
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