The Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
The Respondent is Trail Version of Michigan, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with LiquidNet Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2013. On November 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2013.
The Center appointed Neil J. Wilkof as the sole panelist in this matter on January 6, 2014. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant has provided a list of trademark registrations that consist, in whole or in part, of the mark COMERICA, including the following valid and subsisting United States registrations.
Registration No. 1,251,846, for the mark COMERICA, for “banking services” in international class 36, registered on September 20, 1983.
Registration No. 1,776,041, for the mark COMERICA and design, for “banking services” in international class 36, registered on June 8, 1993 (hereinafter collectively COMERICA or the Mark).
The Disputed Domain Name was created on September 28, 2013. 5. Parties’ Contentions A. Complainant
The Complainant is a financial services company with its headquarters in Dallas, Texas, USA. It maintains bank locations in Texas and several other states, as well operating select businesses in additional states of the United States as well as in Canada and Mexico. It is among the 30 largest banking companies in the USA.
The Complainant invests millions of dollars every year to promote the goods and services identified by the Mark. Because of the long use and commercial recognition of the Mark, the Mark has become well-known under relevant United States federal and state law. The Mark has acquired significant goodwill and reputation in its relevant fields of activity
The Complainant holds numerous registrations of marks that include or consist of the Mark, registered before the registration of the Disputed Domain Name.
The Disputed Domain Name is identical or confusingly similar to the Mark. It incorporates the Mark COMERICA in its entirety, together with the element “bnc”, which is phonetically very similar to the word “bank”. The addition of the element “bnc” does not serve to distinguish the Disputed Domain Name from the Mark.
The Respondent does not have any legitimate interest in the Disputed Domain Name. The Complainant did not grant to the Respondent any license, permission, authorization or other form of consent to use the Mark. The Respondent does not own nor can it obtain any rights in the Mark or any mark confusingly similar to the Mark. The Respondent is not making any bona fide offering of goods or services under the Disputed Domain Name. The Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith. The Disputed Domain Name accesses a website that merely promotes an unidentified blog that purportedly “is coming soon.” In selecting the Disputed Domain Name, the Respondent knew, or should have known, of the registration and use of the Mark by the Complainant, dating back more than 30 years. The Respondent provided false or at the least inaccurate contact information in registering the Disputed Domain Name. In so doing, the Respondent has intended to create a likelihood of confusion with the Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website; to disrupt the Complainant’s business; to deceive consumers; to trade off the goodwill of the Complainant in the Mark; and to misappropriate the Complainant’s rights in the Mark.
Based on the foregoing, the Complainant alleges the following:
1. The Disputed Domain Name is confusing similar to the Mark.
2. The Respondent has no rights or legitimate interests in the Disputed Domain Name.
3. The Disputed Domain Name was registered and has been used by the Respondent in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Name should be cancelled or transferred:
(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.
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate. A. Identical or Confusingly Similar
Having regard to the nature of this proceeding, the evidence proffered by the Complainant, and the fact that the Respondent failed to respond to the Complaint, the Panel finds that the Complainant has carried its burden of proof on this element and has demonstrated that the Disputed Domain Name is confusingly similar to its Mark.
In determining whether there is confusing similarity between a domain name and a mark with respect to paragraph 4(a)(i) of the Policy, it is a well-established principle that special attention should be paid to the mark as compared to the dominant part of the domain name. As the panel in Dr. Ing. H.c.F. Porsche AG v. Vasily Terkin,WIPO Case No. D2003-0888, noted, “a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the UDRP.”
The Disputed Domain Name fully incorporates the Mark together with the letters “bnc”. The Panel notes the letters “bnc” are phonetically similar to the word “bank”. The fact that there is a misspelling by the Respondent of the word “bank” does not serve to distinguish between the Disputed Domain Name and the Mark, especially given the phonetic similarity between the word “bank” and “bnc”. See Ebay Inc. v. Wangming, WIPO Case No.. D2006-1107. As stated by the panel in Sony Kabushuki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409, “neither the addition of an ordinary descriptive word nor the suffix “.com” detracts from the overall impression of the dominant part of the name, namely the trademark SONY”. The same applies to the instant situation.
For the foregoing reasons, the Panel finds that the Disputed Domain Name is confusingly similar to the Mark. B. Rights or Legitimate Interests
The Panel finds that the Complainant has carried its burden of proof on this element and has demonstrated a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
There is no evidence that the Respondent has registered any mark that consists of or contains the Mark, or any material portion thereof. There is no evidence that the Respondent has entered into any agreement, authorization or license with, or has secured any consent from, the Complainant with respect to the use of the Mark. The name of the Respondent bears no resemblance to the Disputed Domain Name nor is there any evidence to support the conclusion that the Respondent is commonly known by the Mark or the Disputed Domain Name. There is no evidence that the Respondent is making legitimate noncommercial or fair use of the Disputed Domain Name. Accordingly, there is no basis to conclude, having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, that the Respondent has any right or legitimate interest in the Disputed Domain Name.
For the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the Complainant:
(i) circumstances indicate that the Respondent has registered the Disputed Domain Name primarily to sell or otherwise transfer it to the Complainant who is the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name;
(ii) the Disputed Domain Name has been registered to prevent the Complainant from reflecting its Mark in a corresponding domain name;
(iii) the Disputed Domain Name has been registered primarily for the purpose of disrupting the business of a competitor; or
(iv) the use of the Disputed Domain Name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel does not believe that any of the circumstances of this list set out in the Policy applies directly to the instant case. However, inasmuch as the list is non-exhaustive, and having regard to the circumstances of the registration of the Disputed Domain Name, the Panel is of the view that such circumstances support the conclusion that the Respondent has acted in bad faith within the meaning of the Policy.
The Disputed Domain Name was registered in 2013, more than 30 years after the Complainant registered its Mark in the USA. Noting that the Respondent appears to be located in USA, the Panel considers it likely that the Respondent was aware of the Mark when it registered the Disputed Domain Name.
In registering the Disputed Domain Name, the Respondent provided information that is either misleading or simply false. Thus, it is plausible to conclude that the Respondent has acted in a misleading manner based on the following: (i) the contact information for the Respondent includes too many digits in the telephone number; (ii), the telephone number provided consists of the sequence “0-10” followed by the digits “576”; (iii) the names of two states is provided as an address, namely Maryland, Michigan, Michigan; (iv) no street address or city name is provided; (v) there is an incorrect number of digits in the zip code provided; (vi) while the email address for the Respondent is “trialversion”, the Respondent’s listed name is Trail Version, meaning that either the email name is incorrect or the Respondent’s name is incorrect. When such inaccurate or misleading information is taken in the aggregate, it points to bad faith conduct by the Respondent in the registration of the Disputed Domain Name.
Moreover, using the Disputed Domain Name solely for the purpose of announcing an otherwise unidentified “coming soon” website constitutes bad faith in this Panel’s view. In the instant case, while the webpage accessed by the Disputed Domain Name refers to a blog that is “coming soon”, and inviting users to enter their name and email address, the Complainant has provided evidence that it was not able to do so.
WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2 (Consensus view) notes that, depending upon the circumstances of the case, bad faith behavior by the respondent can occur even without overt active use. An early example of this is found in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in which the panel identified circumstances that supported the conclusion that the respondent had acted in bad faith even without active use of the domain name by the registrant. These factors include: (i) using a well-known trademark held by the complainant; (ii) no evidence of actual or contemplated good faith use by the registrant; (iii) active steps taken by the registrant to conceal its identity; (iv) provision of false or misleading information by the registrant; and (v) no credible basis to believe that any actual or contemplated use of the domain name by the registrant would be legitimate.
The Panel believes that these factors are instructive in the instant case. The Panel is of the view that factors (i) - (iv) above explicitly apply to the behavior of the Respondent with respect to the Disputed Domain Name. With respect to factor (v), noting above, the Panel find no reasonable basis to to conceive of any actual or contemplated legitimate use of the Disputed Domain Name by the Respondent. Taking these factors as a whole, the Panel believes that they point to bad faith behavior by the Respondent.
For the foregoing reasons, the Panel finds that the Disputed Domain Name has been registered and is being used 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 Disputed Domain Name, , be transferred to the Complainant.
Neil J. Wilkof
Sole Panelist
Date: January 20, 2014
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