The Complainant is Comerica Bank of Dallas, Texas, United States of America, represented by Bodman PLC, United States of America.
The Respondent is Contact Privacy Inc. Customer 0133903206/ICS INC., of Toronto, Ontario, Canada, and of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom. 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 April 14, 2014. On April 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2014, 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 April 23, 2014 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 April 23, 2014.
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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 30, 2014.
The Center appointed Sir Ian Barker as the sole panelist in this matter on June 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 the Rules, paragraph 7. 4. Factual Background
The Complainant is a financial services company with headquarters in Dallas, Texas. It is amongst the largest companies in the United States and has bank locations in several states in the United States. It also operates in Canada and Mexico. Its assets as at the end of 2013 were $US65.4 billion. The Complainant has operated for many years using the mark COMERICA for marketing its services since 1982. The Complainant owns numerous United States registered trademarks and service marks for the mark Comerica. The mark has been used by the Complainant since 1982.
The disputed domain name directs Internet users to various websites that contain links to financial services providing in competition with the Complainant. The Disputed Domain Name was registered on June 20, 2007.
The Respondent, ICS Inc., has been the respondent in at least two WIPO Cases: Byram Healthcare Centers, Inc. v. ICS Inc. / Contact Privacy Inc.,WIPO Case No. D2014-0027 and CBOCS Properties v. Privacy Protection Services, Inc./ICS Inc., WIPO Case D2013-0700. Both decisions recorded that the Respondent has had a long history of abusive registrations of domain names.
The Complainant gave the Respondent no authority to use its trademarks in any way. 5. Parties' Contentions A. Complainant
The Respondent's Disputed Domain Name is confusingly similar to the Complainant's registered trademark. The addition of the expression "com" before the trademarked word does nothing to reduce the confusing similarity.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant gave no license or other permission to the Respondent to reflect its trademark in the Disputed Domain Name.
None of the provisions of paragraph 4(c) of the Policy apply to the Respondent who has not filed a Response.
The Disputed Domain Name was registered and is being used in bad faith. The Complainant's mark was well-known for many years prior to the registration of the Disputed Domain Name. Bad faith registration can be inferred from the form of the Disputed Domain Name – a common Internet form added-on to a registered trademark. The fact that Disputed Domain Name redirects to websites operated by financial services providers other than the Complainant shows that the Respondent has intentionally attempted to attract for commercial gain Internet users who may be confused into thinking that the Complainant has endorsed the Respondent's website. The Respondent benefits financially from this click-through arrangement.
The Respondent is intending to disrupt the Complainant's business and to redirect traffic intended for the Complainant to its own website. This is a blatant attempt to misappropriate the Complainant's trademarks. The Respondent has been identified as an abusive registrant of domain names by earlier WIPO UDRP decisions. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This criterion is established. The combination of the expression "com" and the registered trademark clearly demonstrates confusing similarity between the Disputed Domain Name and the Complainant's registered trademark. B. Rights or Legitimate Interests
The Complainant has given the Respondent no authority to reflect the Complainant's registered trademark in the Disputed Domain Name. The Complainant has therefore made out a prima facie case under paragraph 4(a)(ii) of the Policy, thus shifting the burden to the Respondent to show that it came within one of the provisions of paragraph 4(c) of the Policy. The Respondent has not done this and has not filed a Response.
Accordingly, paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the Respondent must be presumed to have registered the Disputed Domain Name (incorporating as it does the Complainant's famous mark) with the intention of capitalizing on the reputation attaching to that mark in order to make financial gain through the website links accessed by the Disputed Domain Name.
Although registration of the Disputed Domain Name took place seven years ago and there has been no explanation from the Complainant as to why it has taken so long to take some action to prevent the Respondent's use of the Disputed Domain Name, the total facts give rise to the strong influence that the Respondent registered the Disputed Domain Name in bad faith and continues to use the Disputed Domain Name in bad faith.
The list of instances of abusive registration by the Respondent recorded in the two WIPO UDRP decisions mentioned above, strengthens the inference of bad faith. So does, in this case, the fact that the Respondent hides behind a privacy service to shield its identity. 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.
Sir Ian Barker
Sole Panelist
Date: June 19, 2014
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