The Complainant is Comerica Bank, Dallas, Texas, United States of America, represented by Bodman LLP, United States of America.
The Respondent is Steve Walter, Kansas, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2015. On January 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 7, 2015, 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 January 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for response was February 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on February 9, 2015.
The Center appointed Evan D. Brown as the sole panelist in this matter on February 20, 2015. 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 following facts, relevant to the Panel’s determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant is a large and successful United States-based financial services company with operations extending into Canada and Mexico. It owns dozens of United States trademark registrations containing the word COMERICA or a stylized version of same (the “Mark”), including Reg. No. 1,251,846, issued almost 30 years prior to the registration of the disputed domain names. The Respondent used to establish a web page that intentionally attempted to mislead Internet users into believing the web page was connected to, authorized by, or affiliated with, the Complainant. According to the Complainant, as of the date of the filing of the Complaint, neither disputed domain name resolved to a web page.
Both of the disputed domain names were registered on July 10, 2013. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain names are identical or confusingly similar to the Mark because, among other things, the disputed domain names are comprised of the descriptive, non-distinctive prefix “e-” and the Mark.
The Respondent has no rights or legitimate interests in the disputed domain names, according to the Complainant, because the (a) the Complainant has never licensed the Respondent to use the Mark or the disputed domain names; (b) the Respondent has neither used nor made demonstrable preparations to use the disputed domain names in connection with any bona fide offering of goods or services; (c) the Respondent is neither known nor licensed to be known by the disputed domain names; (d) the Respondent is making no legitimate noncommercial or fair use of the Mark; and (e) the Respondent is incapable of obtaining any intellectual property rights in the Mark.
Under the bad faith element, the Complainant contends that the Respondent (a) could not make any plausible non-infringing use of the disputed domain names; (b) had actual knowledge of the Mark; (c) set up a holding page using at least one of the disputed domain names; (d) used a privacy registration service; (e) provided inaccurate or falsified contact information in the WhoIs database; and (f) refused to voluntarily transfer the disputed domain names in response to a cease and desist letter and follow up communications from the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and is being used in bad faith. A. Identical or Confusingly Similar
The mere addition of non-significant elements to a trademark comprising a domain name do not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark.” See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain names contain the Complainant’s trademark COMERICA in its entirety, as a dominant element, with the descriptive, non-distinctive prefix “e-” that does not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant's well-known COMERICA mark.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it owns multiple valid and subsisting trademark registrations for the mark COMERICA, as noted above.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of production shifts to the Respondent. Canon U.S.A. Inc. v. Miniatures Town,WIPO Case No. D2014-0948, citing: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after complainant makes prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. The Panel finds credible and is persuaded by the Complainant’s assertions that (a) the Complainant has never licensed the Respondent to use the Mark or the disputed domain names, (b) the Respondent has neither used nor made demonstrable preparations to use the disputed domain names in connection with any bona fide offering of goods or services, (c) the Respondent is neither known nor licensed to be known by the disputed domain names, and (d) the Respondent is making no legitimate noncommercial or fair use of the Mark.
By failing to respond to the Complaint, the Respondent did not pick up its burden to demonstrate rights or legitimate interests. And no other facts in the record tip the balance in the Respondent’s favor. Accordingly, the Complainant has established that the Respondent lacks any rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that a disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location.”
The Complainant has met this element of the Policy. In this case, the Respondent’s bad faith is shown most clearly in the Respondent’s establishment of a web page under one of the disputed domain names titled “Internet Banking”. The web page displayed the Mark, and provided numerous other indications that would lead a reasonable visitor to believe that the web page was provided by the Complainant, or that it was sponsored by, affiliated with, or endorsed by the Complainant. Further, the text of the web page established under the domain name included reference to an email address established under the domain name. Such connection between the two disputed domain names enables the Panel to confidently impute the same bad faith to the registration and use of both domain names.
The Complainant has established bad faith registration and use even though neither disputed domain name resolved to any web page as of the date of the filing of the Complaint. “If at any time following the registration the name is used in bad faith, the fact of bad faith use is established.” Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021 (a sufficiently proven one-time bad faith use is satisfactory). 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 names, and be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: March 2, 2015
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