Complainant is Comerica Bank of Dallas, Texas, United States of America (“United States”), represented by Bodman PLC, United States.
Respondent is Domain Sales - (Expired domain caught by auction winner) c/o Dynadot, of San Mateo, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2018. On September 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2018, 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 September 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 19, 2018.
The Center appointed Mark Partridge as the sole panelist in this matter on October 31, 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
Complainant is a financial services company headquartered in Dallas, Texas, and has bank locations in other states, including, Arizona, California, Florida, and Michigan.
Complainant provides United States Patent and Trademark Office search results, listing forty-three (43) records for COMERICA trademark-related registrations and applications. Particularly, Complainant owns U.S. trademark registrations, including: Reg. No. 1251846 for COMERICA, registered on September 20, 1983; and, Reg. No. 1776041 for COMERICA, registered on June 8, 1993. Complainant also has a trademark application for COMERICA TREASURY MOBILE, U.S. Ser. No. 88075468, which was filed on August 13, 2018 (thereafter “the Mark”).
On August 16, 2018, Respondent registered the disputed domain name.
At the time of the filing of the Complaint, the disputed domain name redirected to a parking page advertising the dispute domain name for sale. As of the time of this decision, the disputed domain name is inactive as it resolves to an error page, demonstrating that the service is unavailable. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has rights in the mark COMERICA and provides evidence of its trademark registrations and applications. Complainant contends that the disputed domain name, by incorporating the exact Mark in its entirety, is confusingly similar to a trademark in which Complainant has rights. Complainant also asserts that the dominant portion of the disputed domain name is the Mark, and the disputed domain name is not made distinctive by the inclusion of non-distinctive words “Treasury Mobile”. Complainant contends that “Treasury Mobile” are words commonly used in the financial industry for providing such services via a mobile device.
Second, Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that it has not granted Respondent a license or otherwise permitted use of the Mark or the disputed domain name. Moreover, Complainant claims the Respondent is not commonly known by the disputed domain name and does not own any trademark or intellectual property rights in the term “COMERICA”. Complainant also alleges that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name in connection with a bona fide offering of goods and services.
Third, Complainant contends that the disputed domain name was registered in bad faith. Complainant maintains that, as a result of the Mark’s long use and widespread commercial recognition, the Mark is well known. Complainant asserts that Respondent knew or should have known that the disputed domain name would be confusingly similar to Complainant’s Mark. Citing to previous WIPO UDRP panel decisions, Complainant asserts that other panels have found that Complainant’s Mark is well known.
Additionally, Complainant argues that the sequence of events creates a strong inference that Respondent was fully aware of Complainant’s rights in the Mark. Complainant maintains that Respondent had actual knowledge of Complainant’s rights in the Mark because Respondent registered the disputed domain name three days after Complainant filed a trademark application for COMERICA TREASURY MOBILE.
Moreover, Complainant asserts that the disputed domain name resolves to a website, offering it for sale at USD 988 and showing a “Buy Now” button, and infers that Respondent registered the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of Respondent’s costs related to the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Respondent is in default. As a result, the Panel may choose to accept the reasonable contentions of Complainant as true. Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287 (citing Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292); see also OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, and notwithstanding Respondent's default, Complainant must prove the following three elements:
(i) the disputed 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 in respect of 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
The first inquiry is whether Complainant rights in the mark. “A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.” Celgene Corporation v. Domain Admin / This Domain is For Sale, Privacy Protected Registrant, Home of Domains,WIPO Case No. D2017-1098; see also Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. Here, Complainant has demonstrated its rights in COMERICA, showing that it is the owner of several COMERICA trademark registrations.
The second inquiry generally involves a “side-by-side” comparison of the disputed domain name and the relevant trademark, assessing whether the mark is recognizable within the disputed domain name.
The disputed domain name incorporates Complainant’s COMERICA trademark in its entirety as its initial component. The descriptive terms “treasury” and “mobile” are apt terms for Complainant’s services and do not distinguish the disputed domain name from Complainant's COMERICA Marks. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s COMERICA Marks. B. Rights or Legitimate Interests
To satisfy the second element, Complainant must make a prima facie case that Respondent lacks rights or legitimate interests in a domain name. Once the complainant satisfies its initial burden, the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name. AB Electrolux v. Mostafa Faheem,WIPO Case No. D2017-2233; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
As mentioned above, Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that it has not granted Respondent a license or otherwise permitted use of the Mark or the disputed domain name. Accordingly, the Panel concludes that Complainant made out a prima facie case that Respondent lacks rights or legitimate interests the disputed domain name.
As a result, the burden shifts to Respondent. As noted above, Respondent failed to respond to Complainant’s contentions. That, however, does not mean that Complainant automatically prevails on this element. The Panel “is left to examine the record to determine whether there is a plausible rebuttal to Complainant’s prima facie case.” Staatsolie Maatschappij Suriname N.V. v. WhoisGuard, Inc. / Statee Loil,WIPO Case No. D2017-1117; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (noting “a respondent’s default is not necessarily an admission that the complainant’s claims are true”).
Here, the Panel notes that Complainant’s arguments are conclusory in nature on this element, yet enough to establish a prima facie case. There is no evidence in the current record indicating that Respondent could demonstrate any of the circumstances evidencing rights or legitimate interests, pursuant to paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith
Lastly, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy offers a non-exhaustive list of circumstances that indicate bad-faith use and registration of a domain name, particularly:
“circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is 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 …”
See WIPO Overview 3.0, section 3.1.
In the present case, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the Mark. Complainant has extensively used the COMERICA Mark well before Respondent registered the disputed domain name. Moreover, Respondent registered the disputed domain name, , three days after Complainant filed a trademark application for COMERCIA TREASURY MOBILE. The Panel concludes that Respondent registered the disputed domain name in bad faith. See Benefitfocus, Inc. v. Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot,WIPO Case No. D2018-1533 (finding bad faith, in part, where domain name “was created only three days after Complainant filed its intent-to-use application for BENEFITFOCUS BENEFITSPLACE”); see also WIPO Overview 3.0, section 3.2.1(iv) (noting that relevant bad-faith considerations in assessing bad faith include “the timing and circumstances of the registration […] particularly following a product launch […].”).
Next, the Panel finds bad-faith use. The Panel accepts Complainant’s assertion, which is supported by screenshot evidence, that the page resolved to a website that advertised the disputed domain name for sale at USD 988 with a “Buy Now” button. This falls within paragraph 4(b)(i) of the Policy. See WIPO Overview 3.0, section 3.1; see also Arla Foods Amba v. Hu Yifei,WIPO Case No. DCO2017-0046 (finding bad-faith use by Respondent in part because Respondent offered domain for an inflated price). This conduct, along with the abusive timing and registration of the disputed domain name, supports a finding of bad-faith use. 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.
Mark Partridge
Sole Panelist
Date: November 19, 2018
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