The Complainant is Comerica Bank of Dallas, Texas, United States of America (“United States”), represented by Bodman PLC, United States.
The Respondent is Protection Domain, ITWEB Domain Protection, of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Domainbox Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2014. On July 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2014.
The Center appointed James McNeish Innes as the sole panelist in this matter on August 15, 2014. 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. It is the owner of numerous United States registrations for its trademarks and service marks. It is amongst the 40 largest United States holding companies with USD 65.4 billion in assets. In addition to Texas, it operates in Arizona, California, Florida and Michigan as well as in Canada and Mexico. It has used the COMERICA mark in connection with its services since 1982. A list of the Complainant’s marks that are registered in or pending in the United States that consist in whole or in part of the mark COMERICA is contained within the record. The Respondent is based in Panama. The disputed domain name was registered on July 20, 2010. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following;
(a) The mark, COMERICA (the “Mark”), is coined, distinctive, powerful and symbolizes the goodwill of the Complainant. The Complainant invests millions of dollars every year in the promotion of products and services identified by its Mark. As a result of its long use, and the widespread commercial recognition of the Mark, the Mark is famous under United States federal and state trademark laws. In addition, the Complainant is the domain name registrant for the domain names , and to name a few.
(b) The disputed domain name is identical or confusingly similar to the Mark.
(c) Additional confusion results from the fact that the disputed domain name resolves to rotating websites that provide services that are similar to the financial services provided by the Complainant. Specifically, the disputed domain name sometimes resolves to a website where a credit check is offered to “Comerica visitors”. At other times, it accesses a website with a mortgage calculator and still other times, it resolves to a parking page with links to financial services provided by the Complainant’s competitors. The content of these websites exacerbates the confusing similarity of the disputed domain name and the Mark.
(d) There is no indication that the Respondent has rights or legitimate interests in the disputed domain name.
(e) The Complainant asserts that it has not licensed the Respondent or otherwise permitted the Respondent to use the Mark or the disputed domain name.
(f) Before any notice to the Respondent of the dispute, there was no evidence of 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.
(g) There is no evidence that the Respondent has been commonly known by the disputed domain name.
(h) There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The disputed domain name is being used misleadingly to divert consumers or to tarnish the trademark of service mark at issue. Instead, as discussed above, the disputed domain name redirects to various other websites that offer financial services that are similar to the financial services provided by the Complainant. The Complainant further asserts that the Respondent does not own and cannot lawfully obtain any trademark or intellectual property rights in the Mark or any words or phrases that incorporate or are confusingly similar to the Mark.
(i) The disputed domain name was registered in bad faith by the Respondent, who must have known of the Complainant’s rights in the Mark when registering the disputed domain name. The Mark is a well- known and widely known trademark, and had been in use by the Complainant for almost thirty-nine years by the time the Respondent registered the disputed domain name.
(j) The disputed domain name is being used in bad faith by the Respondent since the disputed domain name redirects to revolving websites that provide services that are similar to the financial services provided by the Complainant. This use evidences the fact that the Respondent 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. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) That the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has.
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant contends that the disputed domain name is identical or confusingly similar to its mark for the following reasons;
a) The disputed domain name is identical or confusingly similar to the dominant portion of the Complainant’s mark COMERICA.
b) There is no substantial difference between the Complainant’s mark and the disputed domain name.
The Panel accepts the Complainant’s contentions. The disputed domain name is identical or confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the panel to be proved based upon its evaluation of the evidence presented, shall demonstrate a respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii):
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 Respondent has not submitted a response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. In the Panel’s view, there is no independent evidence of any plausible circumstance which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), 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 disputed domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration 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 your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) you have registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The Respondent has made no response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b)(iv) of the Policy. The Panel accepts the Complainant’s assertion that the Respondent has attempted to divert users to its website for commercial gain by creating confusion with the Complainant’s mark. The Panel finds that the Policy, paragraph 4(a)(iii) 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.
James McNeish Innes
Sole Panelist
Date: August 21, 2014
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