Comerica Bank wins Comeric.com in WIPO Case

This is an interesting case, the respondent didn’t reply and the domain name was parked which ultimately led to the decision outcome by the sole panellist, however Comeric if it wasn’t parked and the respondent replied, I generally think should have stood a chance to keep the domain name, what do you think?

The Disputed Domain Name was registered on July 7, 2016 and resolves to a parking page with pay-per-click (“PPC”) links. On March 30, 2020, it resolved to a page requiring that the visitor download a browser extension. The parking page includes PPC links to websites of Complainant’s competitors in the financial services industry, as well as to Complainant’s legitimate website (Annex 11 to the Complaint).

The Complainant had sent a cease and desist letter to the Respondent on July 24, 2019, requesting transfer of the Disputed Domain Name, but received no response.

The domain name had been registered first back in 2006 and then dropped in 2016, where it was caught by DropCatch then appears to have been moved out to another registrar and remained in the same ownership under privacy from 2016 onwards but is ComEric – Really a domain name Comerica has right too?

I get the PPC side but if this was developed into another site then they would have no real case… Note at time of writing even though Comerica mentions they own Comerica.com, Comerica.net, Comerica.org – They haven’t registered either the available domain names Comeric.net or Comeric.org if they really wanted to protect there brand do you not think they should invest $20 and own these too?

VOTE @ NamePros – 360, 365 or 247

Read the full case below and here.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comerica Bank v. Domain Admin, Whois Privacy Corp.

Case No. D2020-0778

1. The Parties

The Complainant is Comerica Bank, United States of America (the “United States” or “US”), represented by Bodman PLC, United States.

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <comeric.com> (the “Disputed Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On April 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 2, 2020, 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 April 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2020.

The Center appointed Michael D. Cover as the sole panelist in this matter on May 6, 2020. 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 December 31, 2019, the Complainant was among the 35 largest US banks and had over USD 73.3 billion in assets. In addition to Texas, the Complainant has bank locations in Arizona, California, Florida and Michigan, with businesses operating in several other states of the US, as well as in Canada and Mexico.

The Complainant is the proprietor of registrations and applications for the trademark COMERICA and has used this trademark in connection with banking services since 1982. The Complainant has a considerable number of other US registered trademarks which consist in whole or in part of the mark and the COMERICA trademark is registered in a number of other jurisdictions, including Brazil, China, Canada, the European Union and Mexico.

The Complainant has invested millions of dollars every year in the promotion of products and services identified by its COMERICA trademark. The Complainant sponsors the Major League Baseball stadium in Detroit, which is known as “Comerica Park”. This sponsorship began in 1998 and will extend through 2034.

The Complainant is the registrant for a considerable number of domain names, which are set out as Annex 10 to the Complaint, including <comerica.com>, <comerica.net> and <comerica.org>.

According to the WhoIs database of the Registrar, the Respondent is Domain Administrator, Whois Privacy Corp. The only available information is the Respondent contact details.

The Disputed Domain Name was registered on July 7, 2016 and resolves to a parking page with pay-per-click (“PPC”) links. On March 30, 2020, it resolved to a page requiring that the visitor download a browser extension. The parking page includes PPC links to websites of Complainant’s competitors in the financial services industry, as well as to Complainant’s legitimate website (Annex 11 to the Complaint).

The Complainant had sent a cease and desist letter to the Respondent on July 24, 2019, requesting transfer of the Disputed Domain Name, but received no response.

5. Parties’ Contentions

A. Complainant

Identical and confusingly similar to a trademark in which the Complainant has rights

The Complainant sets out that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant submits that the trademark COMERICA is, as it puts it, coined, distinctive and powerful and symbolises the goodwill of the Complainant. The Complainant refers the Panel to various UDRP decisions of previous panels which have come to this conclusion. The Complainant refers to its very considerable investment in the promotion of the products and services as identified by the trademark COMERICA, including the sponsorship programme already referred to in this Decision. The Complainant concludes that, as a result of its long use and widespread commercial recognition, the trademark COMERICA is famous under US Federal and State trademark laws. The Complainant notes in addition that it is the registrant of a considerable number of domain names, which include the word “Comerica”, which are set out in Annex 10 to the Complaint.

The Complainant continues that the Disputed Domain Name is confusingly similar to the trademark COMERICA, because it incorporates that trademark in its entirety, although the Disputed Domain Name omits the final letter “a” of the trademark. Having drawn the attention of the Panel toaprevious decision Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragon d/b/a Creative Genius Domain Name SalesWIPO Case No. D2001-0729, in which it was stated “If a domain name wholly incorporates a trademark, it is confusingly similar to the mark for the purposes of the Policy”. The Complainant submits that the dominant portion of the Disputed Domain Name is the trademark element COMERICA and continues that this is generally known in the domain name industry as typo squatting, which is a registrant’s attempt to capitalise on a common misspelling of mark by registering the misspelled version. The Complainant notes that WIPO UDRP panels have established that domain names consisting of misspellings of a trademark are confusingly similar to the relevant mark.

Rights or Legitimate Interests

The Complainant sets out that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant states that there is no indication that the Respondent has rights or legitimate interests in the Disputed Domain Name. In particular, the Complainant asserts that it has not granted the Respondent a license or otherwise permitted the Respondent to use its trademark COMERICA or the Disputed Domain Name. The Complainant continues that, before notice to the Respondent of the dispute, there is 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 bone fide offering of goods or services, that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name or that the Respondent is offering bone fide goods or services without intent to mislead consumers or to tarnish the trademark at issue.

The Complainant continues that the Disputed Domain Name is passively held and resolves either to a parking page or a page requiring that the visitor download a browser extension. The Complainant states that the parking page includes links to websites of the Complainant’s competitors in the financial services industry, as well as to the legitimate website of the Complainant. The Complainant has set out a printout of all the links available on the Disputed Domain Name at Annex 11 to the Complaint.

The Complainant states that the Disputed Domain Name, when reached through the Chrome browser and potentially other browsers redirects to a web page requiring that the visitor download a “Secured Search” Chrome extension called “Securify” and submits that WIPO UDRP panels have consistently held that such uses are not bone fide offering of goods or services under the Policy.

Finally, the Complainant asserts that the Respondent does not own and cannot lawfully obtain any rights or legitimate interests in the Disputed Domain Name, in that the Disputed Domain Name is nearly identical to the trademark COMERICA, with the only difference being the omission of the final letter “a”. The Complainant submits that this is a typo squatting technique that drives traffic to the website through initial interest confusion and quotes in that connection General Electric Company, GE Osmonic’s Inc. v. Optima di Federico PapiWIPO Case No. D2007-0645.

Registered and Used in Bad Faith

The Complainant submits that the Disputed Domain Name should be considered as having been registered in bad faith by the Respondent. The Complainant goes on to set out that its trademark COMERICA is well and widely known and has been used in connection with the Complainant’s banking services since 1982 and that the Disputed Domain Name is nearly identical to a legitimate domain name owned by the Complainant, the sole difference being that the Disputed Domain Name leaves of the final letter “a”. The Respondent’s clear intention, says the Complainant, is to capitalise on visitors who, while navigating to the legitimate website, misspell the legitimate domain name.

The Complainant submits that the Respondent must have known of the Complainant’s rights in the trademark COMERICA at the time of registration of the Disputed Domain Name, because of the Complainant’s large presence in the US, as well as its presence in Canada and Mexico and cites previous UDRP panel decisions, where it had been stated that such a situation “strains credulity to believe that the Respondent was not aware of the Mark and the Complainant’s services” and that “the slightest check or investigation would have disclose the Marks registration and use”. The Complainant submits that these circumstances support a finding that the Respondent was fully aware of the Complainant and the trademark COMERICA at the time of registration of the Disputed Domain Name.

The Complainant submits that the Respondent is using the Disputed Domain Name in bad faith, noting that the Complainant had sent a cease-and-desist letter to the Respondent on July 24, 2019, requesting transfer of the Disputed Domain Name to the Complainant, which brought forth no response.

The Complainant also submits that the Respondent’s passive holding of the Disputed Domain Name constitutes bad faith, in that it resolves to either a parking page or the redirection already noted in the Complaint. The Complainant invites the Panel to examine all the circumstances of the case to determine whether the Respondent is acting in bad faith in circumstances involving passive holding of the Disputed Domain Name. The Complainant points out that the Disputed Domain Name is a common misspelling of the trademark COMERICA, which trademark is coined, distinctive powerful and well-known and has been in use since 1982 and that the Respondent’s action after receiving the cease-and-desist letter, include failing to respond, continuing to operate the Disputed Domain Name with parking page links and failing to transfer the Disputed Domain Name to the Complainant.

In accordance with paragraph 4(i) of the Policy, the Complainant requests that the Panel order that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel decides that the Complainant has established registered rights in its COMERICA trademark, extensive use of which has been made since at least 1982. The Panel also decides that the Complainant’s trademark COMERICA has become a well-known trademark and accepts the submissions of the Complainant in that regard. The Panel also accepts that the Disputed Domain Name is confusingly similar to the Complainant’s registered trademark COMERICA, in which the Complainant has rights. The Disputed Domain Name incorporates the Complainant’s well-known trademark COMERICA in full, with the sole difference that the Disputed Domain Name omits the letter “a”. The Panel also accepts that this is an instance of typo squatting, whereby the Respondent has registered the Disputed Domain Name as a common misspelling of the Complainant’s trademark COMERICA, in which it has rights. The Panel should also note that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not avoid a finding that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

The Panel accordingly decides that the Disputed Domain Name is confusingly similar to the Complainant’s trademark COMERICA, in which the Complainant has registered rights, and that the provisions of paragraph 4(a)(i) of the Policy have been met.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not licensed or authorised the Respondent to use the COMERICA registered trademark and this means that the Complainant has made out a prima facie case and the burden of production accordingly then passes to the Respondent.

The Respondent has not satisfied this burden. The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bone fide offering of goods or services, that it has been commonly known by the Disputed Domain Name nor that it is been making legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the COMERICA trademark of the Complainant.

In addition, the Panel accepts that the use of the Disputed Domain Name that has taken place has been in respect of resolving either to a parking page or a page requiring that the visitor download a browser extension, together with the downloading of an extension to enable redirection of search traffic to 1 to 3 party search engine.

The Panel therefore decides that the provisions of paragraph 4(a)(ii) of the Policy have been met.

C. Registered and Used in Bad Faith

The non-exhaustive list of evidence of registration and use in bad faith in paragraph 4(b) of the Policy includes that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site or location or of a product or service on its web site or location.

The Panel finds that the above circumstances have been established here by the Complainant. This is a reasonable inference from the evidence before the Panel, which has accepted that the Complainant’s trademark COMERICA is well known. This is also a reasonable inference from the Disputed Domain Name resolving to a parking page with PPC clicks and being used for redirection in the manner set out in the Complaint. This finding is also supported in this case by the Complainant’s trademark, COMERICA, being well known, the failure of the Respondent to respond to the cease and desist letter from the Complainant in July 2019, the failure to submit a Response to the Complaint and hence provide any evidence of actual or contemplated good faith use and the concealment of the Respondent’s identity.

The Panel therefore finds that the provisions of paragraph 4(a)(iii) of the Policy have been met.

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 <comeric.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: May 12, 2020

About the Author

Robbie
Robbie Ferguson is an Internet Entrepreneur, Domain Investor, Domain Broker, Blogger and founder of various websites and eCommerce businesses such as ScreenProtectors.co.uk

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