The Complainant is Comerica Bank of Dallas, Texas, United States of America (“United States” or “U.S.”), represented by Bodman PLC, United States.
The Respondent is William Bell of Commerce, Michigan, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2017. On November 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2017, 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 November 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2017. The Respondent did not submit any formal response save for its email communications dated December 7 and 18, 2017. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on December 18, 2017.
The Center appointed Andrew Mansfield as the sole panelist in this matter on January 10, 2018. 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 June 30, 2017, the Complainant was among the 35 largest U.S. banks and had over USD 71 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 has registered rights in the trademark COMERICA since at least 1983.
The disputed domain name was registered on September 14, 2017, and resolves to a parking page of the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant presents evidence that it is the owner of numerous United States registrations and applications for its trademarks and service marks, including:
- Registration No. 1,251,846 for the service mark, COMERICA, for use in “Banking services.” The Complainant has used this mark in connection with these services since 1982 and the trademark was registered on September 20, 1983.
- Registration No. 1,776,041 for the service mark, COMERICA (and Design), for use in “Banking services.” The Complainant has used this mark in connection with these services since 1992 and the trademark was registered on June 8, 1993.
According to a search of the records of the U.S. Patent and Trademark Office, there are 42 marks belonging to the Complainant that are registered in or pending before the U.S. Patent and Trademark Office, and which consist in whole or in part of the mark, COMERICA.
The mark is coined, distinctive, and powerful, and symbolizes the goodwill of the Complainant. The Complainant invests millions of dollars every year in the promotion of the products and services identified by the mark.
The Complainant further asserts the mark is famous.
The Complainant is the registrant of the domain names , and , among many others that contain the trademark COMERICA.
The Complainant first asserts that the disputed domain name is confusingly similar to the trademark COMERICA because the disputed domain incorporates the trademark in its entirety. Further, the Complainant avers that the Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Complainant argues that the domain name was registered and is being used in bad faith. Bad faith is shown, allegedly, by the fact that the trademark is well-known and widely used. Respondent must, therefore, have known of the trademark prior to registration. Finally, the Complainant indicates that the Respondent “parked” the domain name and offered to sell the domain name to the Complainant, when contacted, for a price above the maintenance and registration fees associated with the disputed domain name. This, the Complainant asserts, proves that the registration and use of the disputed domain is in bad faith. B. Respondent
The Respondent did not submit any formal response. In his email communication of December 7, 2017, the Respondent stated that “[i]t is my contention that I bought an available domain name that is now my personal property. Anyone who tries to convert my personal property will be held personally responsible. I disagree that I am in a violation of a copyright of single word as my single word is not the same as their single word.”
In his email communication of December 18, 2017, the Respondent stated that he had “[a]lready responded and object any conversion of my personal property”. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) proves each of the following elements:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The disputed domain name comprises: (a) an exact reproduction of the Complainant’s trademark; (b) combined with the phrase “investment services,” without a space; and (c) is followed by the Top-Level Domain “.com”. It is well established that the generic Top Level Domain (“gTLD”) used as a part of a domain name should typically be disregarded under the first UDRP element as gTLDs do not generally serve to distinguish domain names. The relevant comparison to be made is with the second level portion of the disputed domain name.
The addition of the phrase “investment services” to the trademark COMERICA does not prevent the disputed domain name from being confusingly similar to the trademark.
Accordingly, the disputed domain name is confusingly similar to the COMERICA trademark. The first element of the Policy has been established. B. Rights or Legitimate Interests
The Complainant provided evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Among other arguments presented, the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the COMERICA trademark. The Respondent further does not appear to have any prior rights nor legitimate interests to justify the use of the well-known trademarks of the Complainant in the disputed domain name. It is clear to the Panel that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is it using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy. The Panel finds that the Respondent’s email communications are not sufficient to rebut the Complainant’s prima facie case.
Accordingly, the absence of any permission by the Complainant and the lack of any plausible legitimate reason for the Respondent to use the disputed domain name, lead the Panel to find that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Accordingly, the second element of the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the respondent has 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) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line 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 the respondent’s website or location.
The Respondent has neither rights nor legitimate interests to justify the inclusion of the Complainant’s well-known COMERICA trademark in a domain name. This absence of legitimate interests indicates a lack of good faith. Given the famous and distinctive nature of the mark COMERICA, the Panel finds that the Respondent is likely to have had actual notice as to the existence of the Complainant’s marks at the time he registered the disputed domain name. In fact, because the trademark COMERICA refers to a financial institution, the Panel finds that the Respondent included the phrase “investment services” in the disputed domain name because it adds to the confusion with the Complainant’s trademark. This suggests that the Respondent acted in bad faith in registering the disputed domain name in order to make illegitimate use of it.
Further, the fact that the Respondent did not transfer the disputed name upon request and, in fact, offered to sell the disputed name for an inflated price in excess of maintenance and registration costs, further support the contention that the domain was registered and is being used in bad faith.
The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof that the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Andrew Mansfield
Sole Panelist
Date: January 28, 2018
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