Complainant is Comerica Bank of Dallas, Texas, United States of America ("United States" or "U.S."), represented by Bodman PLC, United States of America.
Respondent is Micheal Ard of Fort Worth, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2017. On August 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 28, 2017.
The Center appointed Gary J. Nelson as the sole panelist in this matter on September 6, 2017. 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
Complainant is the owner of at least one United States Trademark registration for COMERICA with a registration date prior to the date the disputed domain name was registered. Specifically, Complainant owns at least the following relevant trademark registration:
Country
Reg. no.
Mark
Date of Registration
United States
1251846
COMERICA
September 20, 1983
The disputed domain name was registered on May 16, 2017.
The disputed domain name resolved to a website offering financial services in competition with Complainant's services. 5. Parties' Contentions A. Complainant
Complainant is a financial services company headquartered in Dallas, Texas. As of March 31, 2017, Complainant was among the 35 largest U.S. banks and had over USD 73 billion in assets. In addition to Texas, 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.
Complainant owns numerous trademark registrations for COMERICA, by itself or in combination with other words or symbols. Complainant is the owner of U.S. Trademark Registration No. 1251846 for banking services.
The mark, COMERICA, is coined, distinctive, and powerful and symbolizes the goodwill of Complainant. Complainant invests millions of dollars every year in the promotion of the products and services identified by the COMERICA trademark.
As a result of Complainant's long use and widespread commercial recognition, the COMERICA trademark is famous under United States federal and state trademark laws.
Complainant is the owner of numerous domain names containing the COMERICA trademark, including , among others.
Respondent has used the disputed domain name, , in connection with a "phishing" scheme whereby Respondent sought to secure financial information from Internet users lured to the website associated with the disputed domain name. Furthermore, on that same website, Respondent was masquerading as Complainant by using Complainant's COMERICA trademark and fraudulently pretending to be operating as a bank.
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complaint has rights.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and has subsequently used and is using the disputed domain name in bad faith B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "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."
In view of Respondent's failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that 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 Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the COMERICA trademark and that the disputed domain name, , is confusingly similar to Complainant's COMERICA trademark.
Complainant owns at least one trademark registration in the United States for the word mark COMERICA, United States Trademark Registration No. 1251846. The registration date for this trademark (i.e., September 20, 1983) precedes the date upon which the disputed domain name was registered (i.e., May 16, 2017).
Accordingly, Complainant has established rights in its COMERICA mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity).
The disputed domain name is confusingly similar to Complainant's COMERICA trademark because the disputed domain name incorporates the entirety of Complainant's COMERICA trademark and merely adds a generic descriptive phrase (i.e., "cash loans") and the generic Top-Level Domain ("gTLD") suffix ".com". Neither the addition of a purely descriptive term to a well-known mark or the addition of a gTLD suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that "[n]either the addition of an ordinary descriptive word […] nor the suffix ".com" detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy, paragraph 4(a)(i) is satisfied). The addition of "cashloans" to Complainant's COMERICA trademark is insufficient to establish a domain name that is distinct from Complainant's trademark and is insufficient to avoid a finding of confusing similarity.
Complainant has proven the requirements of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that the respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words "cash" or "loans" or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant's rights in its related trademarks precede the respondent's registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in its COMERICA trademark.
Complainant has provided unrebutted evidence showing that Respondent was operating a website at "www." that featured Complainant's COMERICA trademark and which appeared to offer directly competitive services to those offered by Complainant. Such use of the disputed domain name to resolve to a website that gives the overall impression of some sort of connection with Complainant cannot be considered by the Panel as a bona fide offering of goods or services or as a legitimate noncommercial or fair use.
Furthermore, the use of Complainant's COMERICA trademark to lure unsuspecting Internet users to a website featuring the COMERICA trademark for the illicit purpose of obtaining confidential financial information from these same Internet Users can never be a bona fide offering of goods or services or serve as a legitimate noncommercial or fair use of Complainant's trademark.
Moreover, Respondent's decision to add a common descriptive phrase (i.e., "cash loans") to a well-known trademark does not instill Respondent with rights or legitimate interests in the corresponding domain name. See Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of and to the complainant).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant's rights in the COMERICA trademark. Complainant has alleged, and Respondent has not rebutted, that Respondent was obviously aware of the rights owned by Complainant in COMERICA when it registered the disputed domain name. Supporting this conclusion is the fact that Respondent was directly mimicking Complainant on its website as part of the services it offered, as evidenced by the excessive use of the COMERICA trademark on the webpage associated with the disputed domain name. The Panel finds this unrebutted allegation to be convincing and sufficient to establish the bad faith registration and use of the disputed domain name.
In further support of this conclusion, the Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant's rights in the COMERICA trademark. Supporting this conclusion is the fact that Respondent appears to have systematically lured unsuspecting Internet users to the website for the fraudulent purpose of securing confidential financial information, all while masquerading as Complainant. The Panel finds this activity to be conclusive evidence that Respondent registered and is using the disputed domain name in bad faith.
Respondent's awareness of the COMERICA trademark may also be inferred because the mark was registered with the U.S. Patent and Trademark Office prior to Respondent's registration of the disputed domain name and since the COMERICA trademark is widely known. See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of complainant's trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 ("the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").
Furthermore, the Panel finds that the use of the disputed domain name, by Respondent, falls within one of the express examples of bad faith identified in paragraph 4(b)(iv) of the Policy. By using the disputed domain name to allegedly offer services identical to the services offered by Complainant, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's mark.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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 Complainant.
Gary J. Nelson
Sole Panelist
Date: September 14, 2017
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