The Complainant is Comerica Bank of Dallas, Texas, United States of America ("United States), represented by Bodman PLC, United States.
The Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 30, 2017. On August 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2017, 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 September 5, 2017, 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 September 8, 2017. The Complainant filed an additional amendment to the Complaint on September 8, 2017, to correct an administrative formality.
The Center verified that the Complaint together with the amendments to the Complaint (hereinafter named altogether as 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 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2017. On September 14, 2017, the Center received an email communication from an individual stating that the registration of the disputed domain name had been made using its name without authorization. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 2, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on October 11, 2017. The Panel finds that it was properly constituted. The Panel 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, and is among the 35 largest U.S. financial and bank holding companies in the United States. The Complainant also has a presence in Canada and Mexico. The Complainant is the owner of United States trademark registrations for COMERICA and COMERICA BANK in connection with banking services. The Complainant has used the COMERICA mark in commerce since as early as 1982 (See United States Trademark COMERICA, Registration Number 1251846, registered on September 20, 1983). The Complainant's COMERICA mark has been recognized as a well-known mark by several UDRP panels. See, e.g., Comerica Bank v. Rita Rodriquez,WIPO Case No. D2016-0417; Comerica Bank v. Will Rote,WIPO Case No. D2016-0419.
The disputed domain name was registered by the Respondent on April 28, 2017, according to the concerned Registrar's WhoIs records. The disputed domain name thereafter was used in a phishing scam involving a clone of the Complainant's website with a fraudulent log-in screen. The Complainant upon learning of the fraudulent use of the disputed domain name notified the Registrar and the Internet service provider by letter on July 27, 2017, and the fraudulent website was taken down. The notice letter also was sent to the Respondent, who did not offer a reply. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its COMERICA mark, in which the Complainant has demonstrated rights based on registration and use. The Complainant asserts that the addition of an "n" between the "o" and "m" in COMERICA does not serve to dispel the confusing similarity of the disputed domain name to the Complainant's mark, and that this is a classic case of typosquatting.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that it has not licensed or otherwise granted permission to the Respondent to use the COMERICA mark or the disputed domain name, and that the Respondent has not been commonly known by the disputed domain name. The Complainant insists there is no evidence of the Respondent's use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent must have known of the Complainant's rights in the COMERICA mark when registering the disputed domain name, given the Complainant's substantial presence in the U.S., as well as in Canada and Mexico. The Complainant adds that the COMERICA mark is wellknown and has been used in connection with the Complainant's banking services since 1982.
The Complainant submits that the Respondent's use of the disputed domain name in furtherance of a phishing scheme seeking to extract confidential personal banking information from the Complainant's customers establishes beyond any doubt the Respondent's bad faith. The Complainant further contends that the Respondent's current passive holding of the disputed domain name constitutes bad faith registration and use in the overall circumstances of this case. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's COMERICA mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.
The Complainant's COMERICA mark is clearly recognizable in the disputed domain name.3 The addition of the letter "n" in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant's mark, and is evocative of typosquatting. The generic Top-Level Domain ("gTLD") generally is disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's mark. The record reflects that the Respondent registered and has used the disputed domain name to impersonate the Complainant in a fraudulent phishing scheme.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.
It is evident that the Respondent was aware of the Complainant and the Complainant's COMERICA mark when registering the disputed domain name. The record leaves no doubt that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant's mark, through the impersonation of the Complainant in furtherance of a fraudulent phishing scheme.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent's rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant's COMERICA mark in mind when registering the disputed domain name. It is clear from the record that the Respondent's motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant's trademark rights by creating a likelihood of confusion with the Complainant's mark, with the ultimate aim to profit illicitly therefrom.
That there presently is no active use of the disputed domain name does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Considerations that supported a finding of bad faith in Telstra are present in this case as well. The Complainant's COMERICA mark is well known and has been used by the Complainant since 1982. The Respondent clearly was aware of the Complainant and the Complainant's well-known COMERICA mark, and the Respondent's registration of the disputed domain name in the attendant circumstances (including typosquatting) smacks of opportunistic bad faith. There is no evidence of any actual or attempted good faith use of the disputed domain name by the Respondent. Indeed, based on the record in this proceeding, the Panel cannot envision any legitimate or good faith use to which the disputed domain name could be put by the Respondent.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
William R. Towns
Sole Panelist
Date: October 22, 2017
1 The Respondent has fraudulently impersonated the Complainant, and provided false or fictitious contact information when registering the disputed domain name. It appears from the record that the Respondent registered the disputed domain name in another person's name in order to conceal the Respondent's identity. In light of this, the Panel believes that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent's name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. The Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788. The Panel also notes that the Complainant in its amendment to the Complaint requested that the privacy service WhoisGuard Protected, initially identified as the Respondent, be dismissed ("replaced"). The Panel has done so.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
3 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
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