WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comerica Bank v. Domain Administrator, PrivacyGuardian.org / Shi Lei

Case No. D2019-2133

1. The Parties

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

The Respondent is Domain Administrator, PrivacyGuardian.org, United States / Shi Lei, China.

2. The Domain Name and Registrar

The disputed domain name <comericavoluntarybenefit.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2019, 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 6, 2019, 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 the same day.

The Center verified that the Complaint together with the amendment to 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 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2019.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on October 11, 2019. 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 Comerica Bank, a Texas bank association operating in the United States, Canada and Mexico. As of March 31, 2019, the Complainant was among the 35 largest banks in the United States and had over 70.5 billion in assets.

The Complainant owns several trademark registrations in the United States for COMERICA, including the following:

- US word trademark registration for COMERICA number 1,251,846, granted on September 20, 1983 in class 36.

- US word plus design trademark registration for COMERICA number 1,776,041, granted on June 8, 1993 in class 36.

The Complainant also owns many domain names comprising the mark COMERICA, such as <comerica.com>, registered on September 19, 1995, <comerica.net>, registered on February 9, 1998, and <comerica.org>, registered on February 9, 1998.

The disputed domain name was registered on May 8, 2019 and resolves to a parking page with pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant states that it owns trademark registrations for COMERICA in the United States, and that the disputed domain name is confusingly similar to them since it incorporates the exact mark in its entirety.

According to the Complainant, the inclusion of the descriptive words “voluntary” and “benefit” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademark COMERICA.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, is not commonly known by the disputed domain name and it has not acquired any trademark rights related to the disputed domain name.

The Complainant says that the disputed domain name resolves to a parking page and that at least as late as August 21, 2019 it included links to other websites offering financial services that compete with the Complainant’s services.

The Complainant adds and provides evidences that the disputed domain name is nearly identical to the domain name <comericavoluntarybenefits.com>, which was registered on the same date as the disputed domain name and is operated by the company Mercer, Inc. under a license agreement from the Complainant, aiming to offer ‘voluntary benefits’ to the Complainant’s employees. According to the Complainant, this a further indication of bad faith, since the Respondent’s real intent is to capitalize on visitors who, while navigating to the legitimate website, misspell the legitimate domain name.

The Complainant also informs that on May 13, 2019 and July 31, 2019 sent cease and desist letters to the Respondent to try to solve the case but the Respondent did not reply to them.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of several trademarks COMERICA in the United States of America as well as the domain names <comerica.com>, <comerica.net> and <comerica.org>, among others. The Panel finds that the Complainant has trademark rights for purposes of the Policy.

The disputed domain name comprises the Complainant’s trademark COMERICA in its entirety. The addition of the descriptive terms “voluntary” and “benefit” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark.

In this sense, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint nor did it reply to the cease and desist letters sent by the Complainant.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark COMERICA.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. Instead, there is evidence in the Complaint that the Respondent has used the disputed domain name in connection with a website listing links for financial services similar to those provided by the Complainant.

Based on the evidence presented, the Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of domain names under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark COMERICA is registered by the Complainant in the United States and it has been used for many years. Also, the Complainant’s registrations predate the disputed domain name.

The disputed domain name comprises the COMERICA trademark in addition to other descriptive words and the Respondent has no rights or legitimate interests in the disputed domain name. Moreover, the addition of such terms indeed enhances confusion, since the Complainant has entered into a license agreement with the company Mercer, Inc., allowing the registration of the domain name <comericavoluntarybenefits.com> and the use of the corresponding website to offer voluntary benefits to the Complainant’s employees.

As mentioned in the Complaint, the disputed domain name was registered on the same date as the domain name <comericavoluntarybenefits.com> and it is more likely that it was not a coincidence. It seems quite obvious that the purpose of the registration of the disputed domain name by the Respondent deleting only the letter “s” was to deceive Internet users to believe they were negotiating with the Complainant and aiming some kind of advantage.

This Panel finds that the Respondent obviously knew of the Complainant’s mark when it registered the disputed domain name and has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and misleading Internet users to believe that its website belongs to or is associated with the Complainant or its licensee (Mercer, Inc.).

This Panel finds that the Respondent’s intention of taking undue advantage of the trademark COMERICA as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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 <comericavoluntarybenefit.com> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: October 25, 2019