Complainant is Comerica Incorporated of Michigan, United States of America.
Respondent is Comerica Credit of Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2011. On April 26, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On April 27, 2011, GoD, Inc. transmitted by email to the Center its verification response stating that “comerica credit” 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 Respondent of the Complaint, and the proceedings commenced on May 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 25, 2011.
The Center appointed M. Scott Donahey as the sole panelist in this matter on May 27, 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.
On June 1, 2011, the Panel issued the following Procedural Order No. 1:
“WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy”), makes the following observation.
Pursuant to a Complainant’s obligations under paragraph 3(b)(xv) of the UDRP Rules, the Panel hereby orders the Complainant to provide:
1. Any evidence of the ownership of trademark registrations including the mark COMERICA and showing the date of registration by the registering authority.
2. Any screen shots of the Respondent’s web site to which the domain name at issue resolves or to which it links.
The Complainant is ordered to provide such documentation of ownership within 10 days from the date of this Panel Order No.1 to the Center via email to: domain.disputes@.
The Respondent may file any comments (if any) strictly on the points arising from the documents as may be supplied by the Complainant by June 15, 2011.
The due date for the decision in this case is hereby extended to June 18, 2011.”
On June 6, 2011, the Panel received Complainant’s response to Panel Order No. 1.
On June 7, 2011, the Panel issued the following Procedural Order No. 2:
“WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy”), makes the following observation.
The Complaint lists the following entity as the Respondent:
Mehdi Rikkaei
12902 Coralville Court
Houston, Texas 77041
[m---i@]
The Registrar confirmed the Registrant of the Disputed Domain Name as:
comerica credit
12902 Coralville Court
Houston, Texas 77041
United States
[m---i@]
The Registrar confirmed the Administrative Contact of the confirmed Registrant as:
Mehdi Rikkaei
12902 Coralville Court
Houston, Texas 77041
[m---i@]
In light of procedural accuracy and pursuant to Complainant’s obligations under paragraph 3(b)(v) of the UDRP Rules, the Panel hereby requests the Complainant to amend its Complaint to include the correct Respondent, i.e., comerica credit rather than Mehdi Rikkaei.
The Panel notes that because the Registrant of the Disputed Domain Name and the Administrative Contact for the Disputed Domain Name have identical contact information, and whereby the Center previously notified the Complaint to both entities, the Complaint need not be re-notified.
The Complainant is ordered to amend the Complaint by June 12, 2011 to the Center via email to: domain.disputes@.
The Respondent may file any comments (if any) strictly on the points arising from the documents as may be supplied by the Complainant by June 14, 2011.
The due date for the decision in this case is hereby extended to June 22, 2011.”
On June 7, 2011, Complainant filed an Amended Complaint identifying the respondent as Comerica credit. The Amended Complaint will hereinafter be referred to as the “Complaint.” 4. Factual Background
Complainant is a financial services company and is one of the twenty-five largest banking companies in the United States with USD 53.7 billion in assets as of the end of 2010. Complainant has operations in several states, including Arizona, California, Florida, Michigan, and Texas, as well as in Canada and Mexico. Complainant is the owner of numerous marks including the service mark COMERICA. The COMERICA service mark has been used continuously by Complainant since 1982 and was registered with the United States Patent and Trademark Office on September 20, 1983. Complainant expends more than USD 1 million annually in the promotion of its mark.
The domain name at issue was registered on November 9, 2009. The domain name at issue currently resolves to a web site which indicates that a web site is coming soon. 5. Parties’ Contentions A. Complainant
Complainant contends that the domain name at issue is confusingly similar to Complainant’s COMERICA service mark, that Complainant has never given Respondent permission to use its mark and that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the domain name at issue has been registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the domain name at issue, consisting of Complainant’s distinctive service mark and a word (“credit”) descriptive of some of the services which Complainant offers under its mark, is confusingly similar to Complainant’s COMERICA service mark. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a/ Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. B. Rights or Legitimate Interests
The consensus view of UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
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, respondent 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. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names at issue. C. Registered and Used in Bad Faith
In the present case Respondent has registered a domain name consisting of Complainant’s distinctive service mark (which is a coined term) and the word “credit” which is descriptive of some of the services provided by Complainant under its service mark. The service mark was in continuous use for some twenty-seven years prior to the registration of the domain name at issue by Respondent. Respondent has not attempted to counter any of the allegations set forth in the complaint. In this situation, panel decisions have long held that a domain name has been registered and is being used in bad faith. Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 (“[S]ubparagraphs of Paragraph 4(b) are not intended to be the exclusive criterion of bad faith use. The Panel believes that bad faith use can also exist in situations, such as the instant one, where (i) the Domain Name contains in its entirety, and is for all essential purposes only, Complainant’s trademark, (ii) such trademark is a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well know [sic] mark, and (iii) Respondent has alleged no good faith basis for use by it of the Domain Name)”.
Accordingly, the Panel finds that Respondent registered and used the domain name at issue in bad faith. 7. Decision
For 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 Complainant.
M. Scott Donahey
Sole Panelist
Dated: June 22, 2011
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