The Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
The Respondent is Cachgold Inc. of Brooklyn, New York, United States of America, represented by Charles Zhang. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2014, the Registrar 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 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2014. The Response was filed with the Center on April 30, 2014.
At the Request of the Complainant, the proceeding was suspended on May 6, 2014 for the purpose of settlement negotiations. The case was reinstituted on June 6, 2014.
The Center appointed Dennis A. Foster as the sole panelist in this matter on June 11, 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 the Rules, paragraph 7.
On June 6, 2014, the Center received a Supplemental Filing from the Complainant, and on June 20, 2014 a Supplemental Filing from the Respondent in reply. The Policy does not require the Panel to consider Supplemental Filings from the parties, and prior UDRP panels have generally followed the principal of allowing such filings only in exceptional circumstances. The Panel has examined the Complaint and Response and found no issues raised in the Response that would cause this case to rise to the exceptional status necessitating the consideration of a Supplemental Filing from the Complainant. Therefore, the Panel will not consider the Complainant’s Supplemental Filing or the Respondent’s reply to it. See Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited,WIPO Case No. D2010-0776 (“Parties should realise that there is no absolute right under the Rules to file Supplemental Filings…The principles adopted and confirmed in [prior] decisions are that additional evidence or submissions should only be admitted in exceptional circumstances…”); and The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. 4. Factual Background
The Complainant is a financial services company that owns many banks in the United States of America and also does business in Mexico and Canada. The Complainant has several trademark and service mark registrations with the United States Patent and Trademark Office (“USPTO”) for the COMERICA mark (e.g., Registration Nos.1,251,846 and 1,776,041; registered September 20, 1983 and June 8, 1993, respectively), under which it conducts its operations.
The Respondent, a United States resident, owns the disputed domain name, , whose date of creation was November 21, 2012. The disputed domain name is attached to a parked-page website that contains links to the websites of third parties. 5. Parties’ Contentions A. Complainant
- The Complainant is one of the largest holding companies in the United States of America, with USD 65.4 Billion in assets as of the end of 2013. The Complainant offers financial services and operates banks throughout much of the United States and also in Mexico and Canada.
- The Complainant owns numerous trademark and service mark registrations with the USPTO for the coined and distinctive COMERICA mark. As a result of its long use, the mark is famous in the United States, which is the domicile of the Respondent. Moreover, that fame is increased by the Complainant’s ownership of many domain names, such as , and .
- The disputed domain name, , is identical or confusingly similar to the COMERICA mark, since the name contains the full mark with the mere addition of the letter “s”. That addition is insufficient to distinguish the name from the mark, and a simple typographical error will cause Internet users seeking to access the Complainant’s website to be diverted to the Respondent’s website.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or permitted the Respondent to use the COMERICA mark in any domain name, including the disputed domain name.
- The disputed domain name is not used in connection with a bona fide offering of goods or services and there is no indication of any preparation to do so. Instead, the disputed domain name leads to a parked webpage containing links to third party websites. Moreover, there is no evidence that the Respondent has been commonly known as the disputed domain name. The Respondent has no trademarks or service marks corresponding to the name, and it is not being used in a legitimate noncommercial or fair use manner.
- The disputed domain name was registered and is being used in bad faith. The Respondent must have known of the Complainant’s rights in its COMERICA mark prior to registration of the name, since that mark has been in use for more than 30 years and is well-known.
- The placement of links on the parked page to which the disputed domain name resolves is further evidence of bad faith, as undoubtedly the Respondent intentionally derives commercial gain from Internet-user clicks on those links. Moreover, the Respondent intends to disrupt the Complainant’s business by deceiving consumers through an erroneous and unauthorized association of the Respondent’s webpage with the Complainant’s mark. B. Respondent
- The disputed domain name is a combination of the words “come” and “ricas”, and is not related to the Complainant’s COMERICA mark. In fact, the term “ricas” is suitable as a trademark only in the restaurant or food services business. The full Spanish term, “come ricas”, means “eat delicious foods” in English.
- As it is in the banking business and owns , the Complainant should have registered all domain names related to “comericas”, if the Complainant believed that term is important to its business. Moreover, the Complainant does not own a trademark or service mark registration for COMERICAS.
- The disputed domain name, , is not identical or confusingly similar to the COMERICA mark. The pronunciation is different, and the mark naturally refers to America, whereas the disputed domain name is Spanish in origin. Moreover, there are many cases where the addition of an “s” is sufficient to distinguish domain names from trademarks or service marks. For instance, is distinct from ICANN and is distinct from WIPO, as the owners of those two domain names are different from the respective owners of those two marks.
- The Respondent has been making preparations to open a restaurant in the Brooklyn borough of New York City, which preparations began long before notice of this proceeding. Marketing analysis has narrowed potential locations to two possibilities within that area. An Internet search may have shown no preparation to use the disputed domain name, because the Respondent would not wish to disclose confidential business information to the public and potential competitors.
- Registration of a trademark or service mark is not a necessary precursor to registration of a domain name, and the Respondent need not be famous or well-known in order to register the disputed domain name. The Respondent’s registration of that name is for use in its plan to operate a food services business.
- The disputed domain, a combination of two common Spanish words, “come” and “ricas”, was neither registered in bad faith nor is being used in bad faith. The Respondent’s intent was for use of the disputed domain name in a business sector completely different from the Complainant’s banking business. Moreover, there is no evidence of an attempted sale of the disputed domain name to the Complainant or its competitors; no evidence of an attempt to prevent the Complainant from reflecting its mark in the disputed domain name; and no evidence of an attempt to disrupt the Complainant’s business or misappropriate its service mark for commercial gain.
- The disputed domain name is presently parked by action of the Registrar, not the Respondent. This default setting by the Registrar is not evidence of the Respondent’s intent to attract Internet users illegitimately for commercial gain.
- The Complainant is guilty of Reverse Domain Name Hijacking. 6. Discussion and Findings
Under paragraphs 4(a)(i) – (iii) of the Policy, the Panel may rule in favor of the Complainant and grant it a transfer of the disputed domain name, , if the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted suitable evidence (Annexes 6 and 7) of its USPTO registrations, which establish its rights in the COMERICA mark to the Panel’s satisfaction. See, The Schneider Group, Inc. v. Jack Mann,WIPO Case No. D2010-0448 (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”).
The disputed domain name, , contains the full COMERICA mark along with an additional “s” at the end. The Panel finds that this minor distinction does not mitigate the confusing similarity between the disputed domain name and the mark. See, Dr. Ing. h.c. F. Porsche AG v. Porshe Design Porsche Adidas,WIPO Case No. D2012-2029 (finding to be confusingly similar to the PORSCE DESIGN mark, and stating, “The addition of this ‘s’ does nothing to distinguish the disputed domain name from the mark, nor to dispel the risk of confusing similarity.”); and Lego Juris A/S v. Gioacchino Zerbo,WIPO Case No. D2009-0500 (finding to be confusingly similar to the trademark, LEGO).
The Respondent’s argument that the disputed domain name is composed of the two common Spanish language words “come” and “ricas” is not well taken by the Panel. Whether or not the disputed domain name can be broken down in this way, the result is still confusingly similar to the Complainant’s service mark, which is not a common English language word, but a distinctive and fanciful term. Moreover, the Respondent’s recitation that and are not owned, respectively, by the holders of the ICANN and WIPO marks is not persuasive, as the Respondent does not cite any authority – UDRP panel or otherwise – that has found that either of those domain names are not confusingly similar to those respective marks. Finally, the Respondent’s contention that, if the Complainant believed the disputed domain name to be important to its business and confusingly similar to its service mark, it should have registered all possible domain names containing “comericas” is unconvincing. Neither the Policy nor common sense suggests that trademark and service mark holders register all of the nearly infinite possible domain names that are confusingly similar to their respective marks solely to protect themselves from the machinations of cybersquatters.
As a result, the Panel concludes that the Complainant has succeeded in showing that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Given the Complainant’s successful contention that the disputed domain name is confusingly similar to the COMERICA mark and the Complainant’s clear assertion that the Respondent has been granted no license or permission to use that mark, the Panel determines that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Thus, the onus is on the Respondent to come forward with tangible evidence that it possesses such rights or interests. See, Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598 (“…it is the consensus view of WIPO UDRP panels that the threshold for the complainant to prove a lack of rights or legitimate interests is low, and that, once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent.”).
The Respondent has argued neither that it has been commonly known as the disputed domain name nor that it is using the dispute domain name for legitimate noncommercial or fair use purposes. Instead, the Respondent asserts that it has registered the name as part of its preparations to provide food services – in the form of a Spanish-style restaurant – in New York City. As evidence to support this assertion, the Respondent has furnished the Panel with a display of a logo (complete with a simple depiction of what appears to be part of a crab and burrito) and two photographs of potential restaurant locations. In the Panel’s mind, this is very spare evidence of the preparation necessary to carry out the detailed considerations and plans required to open a restaurant in the largest city in the United States. It appears to the Panel that such a showing could have been easily slapped together solely for the purposes of this proceeding. The Panel questions why there is no submission of marketing analyses, financial projections, construction plans, menus, etc. But beyond the Respondent’s unconvincing presentation regarding its supposed plans to start a food servicing business, the Respondent has presented no evidence of demonstrable preparations to use the disputed domain name in connection with that business. Instead, as both parties agree, the name remains attached to a parked webpage. In short, the Panel concludes that the Respondent has failed to present “demonstrable” preparations to use the disputed domain name in a bona fide offering of goods or services as is required under Policy paragraph 4(c)(i). See Sybase, Inc. v. Analytical Systems,WIPO Case No. D2004-0360 (“What is required is that the Respondent show that, before it received notice of this dispute, it has engaged in ‘demonstrable preparations to use the domain name...in connection with a bona fide offering of goods or services’”).
Meanwhile, as previously stated, both parties agree that the disputed domain name is currently attached to a parked webpage that displays links to the offerings of third parties. The Panel holds, in line with numerous prior Policy decisions, that such use also does not constitute a bona fide offering of goods or services. See, CBS Broadcasting Inc. f/k/a CBS Inc. v. Goldmark,WIPO Case No. D2004-0330 (“Respondent has not used the domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair use. Click-through links to other websites is not enough to show a bona fide offering…”).
As the Respondent has failed to rebut the Complainant’s prima facie case, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant contends that the uncontested use to which the disputed domain name is being put – a parked webpage with links that ultimately produce revenue for the Respondent – constitutes bad faith registration and use of the name per Policy paragraph 4(b)(iv) (i.e., the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website for commercial gain).
The Respondent denies neither such linkage use nor receipt of commercial gain from that usage, but asserts only that the responsibility for the disposition of the disputed domain name rests with the Registrar. However, plenty of prior UDRP panels have opined that such an excuse does not relieve a respondent from the ultimate responsibility for the use of a disputed domain name. See, Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474 (“Respondent appears to claim that he is not responsible for the content of the parking page, but this is no defense.”); and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267 (“The Respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the Panel’s view this makes no difference”). Thus, the Panel is inclined to agree with the Complainant that the Respondent’s action – gaining commercially based upon likely Internet-user confusion between the disputed domain name and the Complainant’s mark – has run afoul of Policy paragraph 4(b)(iv).
Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name was 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.
Dennis A. Foster
Sole Panelist
Date: June 25, 2014
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