The Complainant is Comerica Bank of Dallas, Texas, United States of America (“US”), represented by Bodman PLC, US.
The Respondent is Cameron David Jackson aka Cameron Jackson of Kingston, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , and are registered with Instra Corporation Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2016. On August 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 19, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2016.
The Center appointed Mihaela Maravela as the sole panelist in this matter on October 17, 2016. 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 headquartered in Dallas, Texas. As of March 31, 2016 the Complainant was among the 35 largest US financial and bank holding companies and had over USD 69 billion in assets. In addition to Texas, the Complainant has bank locations in Arizona, California, Florida and Michigan, with select businesses operating in several other states, as well as in Canada and Mexico.
The Complainant adduced evidence of the following trademark registrations:
- United States Patent and Trademark Office (“USPTO”) Registration No. 1,251,846 for the service mark COMERICA, used in commerce since 1982 and registered on September 20, 1983.
- USPTO Registration No. 4,746,568 for the service mark COMERICA BANK, used in connection to banking services, financing services, financial advisory and consultancy services since 2014 and registered on June 2, 2015.
- USPTO Registration no. 3,950,474 for the service mark COMERICA WEB BANKING, used in connection to banking services provided through a global computer information network since 2000 and registered on April 26, 2011.
- USPTO Registration no. 3,150,399 for the service mark COMERICA SECURITIES ONLINE used in connection to financial investment and brokerage services in the field of stocks, bonds, securities, mutual funds, retirement plans and trusts since 2005 and registered on October 3, 2006.
The disputed domain names were registered as follows:
- on April 2, 2016;
- on April 20, 2016;
- on April 20, 2016;
- on April 2, 2016;
- on March 30, 2016.
All the disputed domain name resolve to an “Only Domain” parking page. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain names are identical and confusingly similar to the Complainants trademarks since the disputed domain names incorporate the Complainant’s trademarks and certain generic terms, such as “inc”, “tower”, or terms descriptive for the financial services offered by the Complainant such as the terms “securities” or “banking” that are not sufficient to distinguish the disputed domain names from the trademarks of the Complainant. The addition of the extension “xyz” that is a new generic Top-Level Domain (“gTLD”) is irrelevant because it has no particular meaning of its own and does not relate to the services associated to the trademark. The trademark COMERICA is coined, distinctive and powerful and symbolizes the goodwill of the Complainant.
The Complainant also argues that the Respondent has no rights or legitimate interest in respect of the disputed domain names since it has not granted the Respondent a license or otherwise permitted the Respondent to use the trademark or the disputed domain names. There is no evidence that the Respondent has either actually used or prepared to use the disputed domain names in connection with a bona fide offering of goods or services, and there is no evidence that the Respondent has been commonly known by the disputed domain names.
Further, the Complainant argues that the disputed domain names have been registered and used in bad faith with a clear intent to use the disputed domain names as a bargaining tool to extract money from Complainant since the Respondent previously registered the domain name which incorporates a trademark of the Complainant and was subject of a separate UDRP proceeding, Comerica Bank v. Cameron David Jackson,WIPO Case No. D2016-0628 and the disputed domain names were registered prior to the rendering of the decision in the mentioned case on May 13, 2016. During the mentioned previous proceeding the Complainant received unsolicited offers for sale the disputed domain names from the Respondent.
Under such circumstances, the Complainant argues that the Respondent was clearly aware of the Complainant’s name and trademarks at the time of registration of the disputed domain names and that the Respondent purchased all the disputed domain names primarily for the purpose of selling, renting or otherwise transferring the domain names to the Complainant. The Respondent engaged in a pattern of improperly registering and using domain names in bad faith. The Respondent had no intention of using the disputed domain names for any purpose other than to extort money from the Complainant. The current passive holding of the disputed domain names also constitute bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Noting the fact that the Respondent has not filed a response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain names are identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Here, the Complainant has demonstrated inter alia its ownership of trademarks in COMERICA, COMERICA BANK, COMERICA WEB BANKING, COMERICA SECURITIES ONLINE mentioned above.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain names to the trademarks.
UDRP panels customarily treat the first element of a UDRP complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”; some panels refer as well to the “overall impression” created by the domain name. See WIPO Overview 2.0, paragraph 1.2. The Panel finds that these tests are met in this case, where each of the disputed domain names include the Complainant’s distinctive mark with the addition of generic terms. See Comerica Incorporated v. Sammy Lewis,WIPO Case No. D2013-1491.
In this case, the Panel concludes that the disputed domain name is identical to the trademark COMERICA WEB BANKING of the Complainant.
The other four disputed domain names include the trademark COMERICA and generic terms such as “securities”, “banking”, “inc”, “banktowers”. Many panels have established that the addition of a generic word to a trademark will not avoid a determination that the contested domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw,WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a complainant’ trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903.
In the absence of any argument to the contrary from the Respondent, this Panel concludes that the disputed domain names ; ; ; are also confusingly similar to the Complainant’s trademarks. See also Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441.
It is well accepted by UDRP panels that a gTLD, such as “.xyz”, is typically ignored when assessing identity or confusing similarity between a trademark and a disputed domain name.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations 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; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”.
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has established that it is the owner of the trademarks COMERICA, COMERICA BANK, COMERICA WEB BANKING, COMERICA SECURITIES ONLINE and claims that the Complainant has it not licenced or otherwise authorised the Respondent to use the said trademarks. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Comerica”, “Comerica bank”, “Comerica web banking”, “Comerica securities online”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957.
By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names. See for a similar finding KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910.
Further, as discussed in section C below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use.
The Panel therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain names’ registration and use in bad faith.
The fact that the disputed domain names are confusingly similar with the Complainant’s trademarks and that the said trademarks have been used for a long period of time prior to the registration of the disputed domain names indicate not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that he registered the disputed domain names to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.
Moreover, the addition of generic terms in the disputed domain names that relate to the Complainant’s area of business serves to reinforce the association with the Complainant’s trademarks.
Complainant’s COMERICA mark has been registered for over 30 years prior to the registration of the disputed domain names, such that it is unlikely that Respondent was unaware of Complainant’s rights when he registered the disputed domain name. See Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Ryan Murray,WIPO Case No. D2016-0062.
Also, as other Panels have held, the Complainant’s trademark, COMERICA is a well-known name in the banking field with no independent meaning. Comerica Incorporated v. Thanart Chamnanyantarakij, WIPO Case No. D2011-0708.
In addition, the Respondent registered two of the disputed domain names after being notified of the complaint submitted by the Complainant against him in the UDRP proceeding Comerica Bank v. Cameron David Jackson,WIPO Case No. D2016-0628, so the Respondent had actual notice of the complaint in the mentioned proceeding and Complainant’s trademarks before registration of the disputed domain names and . See for a similar finding William Grant & Sons Limited, The Glenfiddich Distillery v. Cameron David Jackson,WIPO Case No. D2016-0261. Moreover, Respondent registered the disputed domain names and shortly before sending to the Complainant further correspondence offering to sell them to the Complainant for USD 225. A similar situation was observed in William Grant & Sons Limited, The Glenfiddich Distillery v. Cameron David Jackson, supra.
The Respondent provided no explanations for why he registered the disputed domain names.
Taking into account the circumstances of the present proceeding, the Panel is persuaded that the disputed domain names were registered in bad faith.
The disputed domain names were registered and are being used in bad faith by the Respondent as per paragraph 4(b)(i), for the purpose of “transferring the domain names to the complainant who is the owner of the trademark […], for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain names”.
An additional factor retained by the Panel as indicative of bad faith registration and use of the disputed domain names is Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210).
Moreover, as also held in Comerica Incorporated v. Zhichao Yang / Whois Privacy Protection Service, Inc., Whois Agent,WIPO Case No. D2013-1184, the Respondent has engaged in a pattern of registering domain names that bear a resemblance to or include famous and/or well-known marks, and has been involved in several UDRP cases where the transfer or cancellation of the disputed domain names were ordered (see, e.g., The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314,WIPO Case No. D2016-1671; Statoil ASA v. Cameron Jackson,WIPO Case No. D2016-1649; Intesa Sanpaolo S.p.A. v. PrivacyDotLink Customer 2413949 / Cameron Jackson,WIPO Case No. D2016-1640; Dollar Bank, Federal Savings Bank v. Cameron David Jackson,WIPO Case No. D2016-1276; BHP Billiton Innovation Pty Ltd v. Cameron David Jackson,WIPO Case No. D2016-1226). The fact that the Respondent has a history of registering domain names that closely resemble and/or include famous and/or well-known marks only strengthens the inference of bad faith (see, e.g., MouseSavers, Inc. v. Mr. Henry Tsung d/b/a ,WIPO Case No. D2004-1034).
In the Panel’s view these circumstances represent evidence of registration and use in bad faith of the disputed domain names. The Respondent failed to bring evidence as to the contrary.
Consequently, the Panel ascertains that the disputed domain names were registered and are 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 names , , , , and be transferred to the Complainant.
Mihaela Maravela
Sole Panelist
Date: November 2, 2016
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