WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Aostria Aostria

Case No. D2020-1053

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Aostria Aostria, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <bnkcomerica.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2020. On April 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2020, 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 May 3, 2020, 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 May 4, 2020.

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 May 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2020.

The Center appointed David Taylor as the sole panelist in this matter on June 13, 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, United States. In 2019, the Complainant ranked among the largest 35 banks in United States, with over USD 73 billion in assets. The Complainant has locations throughout the United States, as well as in Canada and Mexico.

For use in connection with its financial-services offerings, the Complainant has registered, inter alia, the following trademarks:

- United States Trademark Registration No. 1251846, COMERICA, registered on September 20, 1983;

- United States Trademark Registration No. 4746568, COMERICA BANK, registered on June 2, 2015;

- Canadian Trademark Registration No. TMA496352, COMERICA, registered on June 18, 1998;

- Mexican Trademark Registration No. 508574, COMERICA, registered on October 27, 1995; and

- International Trademark Registration No. 1409180, COMERICA, registered on May 3, 2018.

The Complainant is also the registrant of a number of domain names comprising its COMERICA trademark, including <comerica.com>, which it uses in connection with its main customer-facing corporate website.

The disputed domain name was registered using a privacy service on January 19, 2020. The disputed domain name previously resolved to a website titled “BC BANK COMERICA” (the “Respondent’s website”), that purported to offer a variety of financial services. The Respondent’s website included a “secure logins” field where Internet users were invited to enter their username and password.

On January 22, 2020, the Complainant sent a cease-and-desist letter to the Respondent via the privacy service with which the disputed domain name was registered. The Respondent did not reply.

At the time of this decision, the disputed domain name no longer resolves to an active website, having been taken down by the Registrar following a request submitted by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its COMERICA and COMERICA BANK trademarks.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that it has not granted the Respondent any license or otherwise permitted the Respondent to use the Complainant’s COMERICA trademark. The Complainant asserts that the disputed domain name is being used in connection with a fraudulent phishing scam targeting the Complainant’s customers and potential customers by trading on the goodwill of the Comerica brand in order to obtain money and other personal information. The Complainant submits that the contact details listed on the Respondent’s website are false, and that the Respondent’s website was in fact the clone of a legitimate third-party website that had been altered in order to make reference to the Complainant, rather than the third party. The Complainant claims that the Respondent’s website provided a “login feature”, whereby unsuspecting Internet users could submit their confidential bank account login information. The Complainant argues that there is no evidence that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that its COMERICA trademark is well and widely known, having been used in connection with the Complainant’s banking services since 1982. In light of the Complainant’s substantial presence in North America, the Complainant asserts that the Respondent must have known of the Complainant’s rights in the COMERICA trademark when it registered the disputed domain name. The Complainant further argues that there is evidence to suggest that the Respondent had actual knowledge of the Complainant and its trademarks, as the Respondent has cloned the website of a third-party financial institution in the furtherance of a phishing scam, making use of the Complainant’s trademark. The Complainant submits that the disputed domain name has been used to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant asserts that the Respondent’s registration and use of the disputed domain name signals a clear intent to disrupt the Complainant’s business and deceive consumers, and constitutes a blatant misappropriation of the Complainant’s well-established and famous trademark.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to prevail, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the COMERICA and COMERICA BANK trademarks, the registration details of which are set out in the factual background section above.

The disputed domain name comprises the Complainant’s COMERICA trademark in its entirety, altered only by the addition of the letters “bnk”, ostensibly as a short-form reference to the word “bank”, as a prefix. The addition of the letters “bnk” to the Complainant’s trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s COMERICA trademark, which remains clearly recognizable in the disputed domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The disputed domain name also features the dominant elements of the Complainant’s COMERICA BANK trademark, simply reversing its constituent elements, deleting the space between the two words, and shortening the word “bank” to “bnk”. Despite these alterations, the Complainant’s COMERICA BANK trademark is easily identifiable in the disputed domain name.

The generic Top-Level Domain “.com” may be disregarded for the purposes of comparison under the first element of the Policy; see WIPO Overview 3.0, section 1.11.1.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has provided evidence in the form of screen captures indicating that the Respondent was previously using the disputed domain name to resolve to a website that prominently featured the Complainant’s COMERICA trademark and purported to offer a range of financial services including bank accounts, mortgages, loans, and credit cards. The Complainant has provided further evidence showing that the Respondent’s website had effectively reproduced the contents of the official website of a legitimate third‑party financial institution, with some minor cosmetic changes and added reference to the Complainant’s trademark.

In light of the above, the Panel is of the view that the Respondent has used the disputed domain name to impersonate or otherwise create a misleading impression of association with the Complainant in an effort to mislead unsuspecting Internet users into believing that they had arrived an official website of the Complainant, whereby the Respondent positioned itself to obtain private banking credentials from a false login portal placed on the Respondent’s website. Prior UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13.

None of the examples of bona fide use of a domain name as contemplated by paragraph 4(c) of the Policy appears to apply, and the Respondent has not come forward to otherwise assert any rights or legitimate interests in the disputed domain name.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Prior UDRP panels have recognized the Complainant’s longstanding and widespread use of the COMERICA trademark; see, e.g., Comerica Bank v. William Bell, WIPO Case No. D2017-2228. The Panel finds that the Complainant has established substantial reputation and goodwill in its COMERICA trademark resulting from over 30 years of use in commerce.

The Panel infers from the contents of the Respondent’s website that the Respondent was well aware of the Complainant and its rights in the COMERICA trademark at the time it registered the disputed domain name, and did so with a view to using the disputed domain name in order to impersonate the Complainant in the furtherance of a fraudulent online scheme. The Panel finds that the disputed domain name was registered in bad faith.

As stated under the preceding element, the Panel finds that the Respondent has used the disputed domain name in an effort to impersonate the Complainant, or otherwise mislead Internet users as to the source of the Respondent’s website. As noted in WIPO Overview 3.0, section 3.1.4, given that the use of a domain name for per se illegitimate activity such as phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith. The Panel concludes that by using the disputed domain name in the manner described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website and the services purportedly offered therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Panel further considers the Respondent’s use of a privacy service to hide its identity, and the provision of false contact information on its website, to be evidence of the Respondent’s bad faith; see WIPO Overview 3.0, section 3.6.

The Panel finds that the disputed domain name was registered and used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <bnkcomerica.com> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: June 26, 2020