Comerica Bank v. Rose Ed
Claim Number: FA1809001807098
Complainant is Comerica Bank (“Complainant”), represented by Jaron M. Bentley of Bodman PLC, Michigan, USA. Respondent is Rose Ed (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comericaus.us>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2018; the Forum received payment on September 20, 2018.
On September 21, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <comericaus.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@comericaus.us. Also on September 21, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a financial services company headquartered in Dallas, Texas. Complainant is among the twenty-five largest U.S. banks and has over $72 billion in assets. Complainant has rights in the COMERICA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,251,846, registered Sep. 20, 1983). See Compl. Annex 4. Respondent’s <comericaus.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and merely adds the common abbreviation “us” and the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <comericaus.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent registered and uses the <comericaus.us> domain name in bad faith. Respondent previously used the domain name to resolve to an index page, and subsequently used the domain name to resolve to a blank webpage, where both uses failed to contain any legitimate substantive content. See Compl. Annex 11. Further, on at least one occasion, the domain name resolved to a webpage imitating Complainant’s legitimate webpage, where Respondent attempted to phish for users’ personal login information. See Compl. Annex 11. Such use disrupts Complainant’s business by intentionally attempting to attract Internet users to its webpage for Respondent’s commercial gain. Moreover, when Complainant contacted Respondent regarding the infringing use, Respondent replied by offering to sell the domain name for an unspecified amount. See Compl. Annex 15. Additionally, Respondent clearly had actual and constructive knowledge of Complainant’s rights in the mark at the time it registered the infringing domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <comericaus.us> domain name on July 29, 2018.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the dispute domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that the dispute domain name, <comericaus.us>, is confusingly similar with Complainant’s valid and subsisting trademark, COMERICA. Complainant has adequately pled it rights and interests in and to this trademark. Respondent arrives at the disputed domain name by appropriating the trademark in full and adding the letters “us” and the ccTLD “.us” to the mark. This is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
As such, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register Complainant’s trademark as its domain name. Respondent is not commonly known by the disputed domain name.
Furthermore, Respondent apparently does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant claims that when Complainant contacted Respondent regarding the infringing use, Respondent replied by offering to sell the domain name for an unspecified amount. Offering a confusingly similar domain name for sale can evince bad faith registration. See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). Complainant provides a copy of the email thread between itself and Respondent, where Respondent did solicit the domain name for sale to Complainant for an unspecified amount. See Compl. Annex 15. As such, the Panel finds that Respondent’s offering of the domain name for sale directly to the Complainant is evidence of bad faith under Policy ¶ 4(b)(i).
Additionally, Complainant argues that Respondent registered and uses the <comericaus.us> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name where Respondent passes itself off as Complainant to phish for personal information from users for Respondent’s own commercial gain. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant does not provide evidence of the alleged passing off behavior by Respondent, only alluding to the purported use in an email it sent to Respondent. See Compl. Annex 15. However, Panel finds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant claims that Respondent inactively holds the <comericaus.us> domain name. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides screenshots of the alleged use, where on one occasion the website displayed the message “Index of /” and on a separate occasion resolved to an entirely blank webpage. See Compl. Annexes 11 and 14. As such, the Panel finds that Respondent failed to actively use the domain name in bad faith under the Policy.
Moreover, Complainant claims that Respondent had actual knowledge of Complainant’s COMERICA mark at the time of registering the <comericaus.us> domain name. Complainant contends that Respondent’s knowledge can be inferred from Complainant’s use of the mark in the United States, Canada, and Mexico for many years, thus generating substantial goodwill over that time. The Panel that’s Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <comericaus.us> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: October 22, 2018
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