The Complainant is Comerica Incorporated of Dallas, Texas, United States of America, represented by Bodman LLP, United States of America (“United States”).
The Respondent is Balticsea LLC of Kaliningrad, Russian Federation / Contact Privacy Inc. Customer 0131519121 of Toronto, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 28, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 31, 2013.
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” 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 June 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2013.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on July 2, 2013. 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 with its headquarters in Dallas, Texas, United States. It is among the 30 largest financial institutions in the United States.
The Complainant is the owner of several United States trademark registrations for its trademark COMERICA, which is a coined trademark, registered as early as 1983. In addition, Complainant has also registered the domain names , and .
The disputed domain name was registered on June 15, 2010. 5. Parties’ Contentions A. Complainant
The disputed domain dame is identical or confusingly similar to the Complainant’s trademark COMERICA, except for the substitution of the letter “k” in place of the letter “c”, which is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. The disputed domain name is phonetically identical to the Complainant’s trademark and simulates a common typing mistake.
Additional confusion results from the fact that the website associated with the disputed domain name directs Internet users to a parking page with links to financial services provided by the Complainant.
The Complainant argues that the Respondent lacks rights or legitimate interests in the disputed domain name, since the Respondent did not demonstrate any use or preparation to use the disputed domain name in connection with a bona fide offering of goods or services, the Respondent has not acquired trademark rights over the disputed domain name, the Respondent is not commonly known by the disputed domain name, nor in any way affiliated with the Complainant. The Complainant also argues that the Respondent has not been authorized by the Complainant to use its trademark COMERICA and/or to register domain names that incorporate the trademark.
Finally, the Complainant argues that the disputed domain name has been registered and is being used in bad faith, because it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, considering that the trademark COMERICA is well-known and widely known and the website associated with the disputed domain name promotes financial services that are similar to the Complainant’s services. The Complainant also argues that the use of the website associated with the disputed domain name to host parking pages evidences that the Respondent has attempt to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or other online location. The Respondent’s actions also evidence a clear intent to disrupt the Complainant’s business, deceive consumers, and trade off, of the Complainant’s goodwill by creating an unauthorized association with it and the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s COMERICA trademark, as it reproduces almost the entirety of the Complainant’s COMERICA trademark. The Panel also finds that the substitution of the letter “k” in place of the letter “c”, is not enough to escape a finding of confusing similarity. On the contrary, it is likely to increase the possibility of confusion amongst consumers, as it simulates a typing mistake. Also, under the confusing similarity test of paragraph 4(a)8i) of the Policy, the addition of the “.com” generic Top-Level Domain is immaterial when considering the issue of confusing similarity between a complainant’s trade mark and a domain name.
The Panel, therefore, finds that the Complainant has established the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interests in the disputed domain dame that contains almost in its entirety the Complainant’s COMERICA trademark.
The Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain dame,. The Respondent did not file a response and, therefore, the Respondent did not submit any evidence of rights or legitimate interests in the disputed domain name.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. In fact, the Complainant has submitted evidence showing that the disputed domain dame has been used in connection with a website offering sponsored links to similar services through a parking page.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, there is no evidence that the Respondent has made or is making a legitimate noncommercial or fair use of the disputed domain name. At the time of this Decision, the Disputed Domain Name was and is used to host a parking page offering sponsored links to financial services. This is not a legitimate noncommercial or fair use of the disputed domain dame. Customers seeking the Complainant’s services are likely to believe that such website is related to the Complainant.
In view of the above, the Panel finds that the Complainant has established the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent has registered the disputed domain dame, which reproduces the Complainant’s famous trademark COMERICA almost entirerly with the substitution of the letter “k” in place of the letter “c” in bad faith. At the time the disputed domain dame was registered, it is unlikely that the Respondent did not have knowledge of the Complainant’s rights in the trademark COMERICA.
The Complainant’s allegations of bad faith are not contested. The evidence provided by the Complainant confirms that it had long been using its COMERICA registered trademark when the disputed domain dame was registered. The Panel finds that the Respondent must have been aware of the Complainant’s rights in the trademark when it registered the disputed domain dame. The Panel finds that the evidence showing that the disputed domain dame was used in connection with the offer of sponsored links to the same services is sufficient for a finding of bad faith registration and use of the disputed domain dame.
Also, under paragraph 4(b)(iv) of the Policy, it is evidence of bad faith that, “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.”
At the time of this decision, the disputed domain dame was and is used to host a parking page offering sponsored links to financial services. This is evidence of the intention by the Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
In light of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Complainant has established the third element of paragraph 4(a) of the Policy. 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 disputed domain name be transferred to the Complainant.
Luiz E. Montaury Pimenta
Sole Panelist
Date: July 16, 2013
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