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Comerica Inc. v. Horoshiy, Inc. [2004] GENDND 1342 (18 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comerica Inc. v. Horoshiy, Inc.

Case No. D2004-0615

1. The Parties

Complainant is Comerica Inc., Detroit, Michigan, United States of America, represented by Bodman LLP, United States of America.

Respondent is Horoshiy, Inc., Curacao, Netherlands Antilles.

2. The Domain Names and Registrars

The disputed domain names <retirecomerica.com> and <webbankingcomerica.com>

are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

The remaining disputed domain names <comericajob.com>, <comericaonlinebanking.com>, <comericawebanking.com>, <comericaweb.com> and <comericabanking> are registered with Nameking.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2004. On August 5, 2004, the Center transmitted by email a request for registrar verification to NameKing.com in connection with the following domain names: <comericajob.com>; <comericaonlinebanking.com>; <comericawebanking.com>; <comericaweb.com>; <comericabanking.com>. On August 5, 2004, the Center transmitted by email a request for registrar verification to iHoldings.com Inc.d/b/a DotRegistrar.com in connection with the disputed domain name <retirecomerica.com> and <webbankingcomerica.com>. On August 9, 2004, iHoldings.com.Inc. d/b/a Dot Registrar.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On August 10, 2004, NameKing.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

On August 25, 2004, Complainant filed an amendment to its claim in regard to a further domain name, <comericatastefest.com>, registered by Respondent with NameKing. 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”), 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 Respondent of the Complaint, and the proceedings commenced on September 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2004. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 23, 2004.

The Center appointed Leon Trakman as the sole panelist in this matter on October 14, 2004. 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

Complainant is incorporated as a bank holding company in the United States and listed on the New York Stock Exchange (CMA). It is among the 20 largest U.S. banks, with commercial banking offices in the United States, Canada and Mexico.

Complainant owns a number of U.S. registrations for its trademarks and service marks, including the service mark COMERICA, registered with the U.S. Patent and Trademark Office. Complainant provides a list of these marks.

Complainant is the registrant for the domain name <comerica.com>.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it invests millions of dollars each year in providing its services and products identified with its Mark, that it has used its Mark continuously since 1982, and that as a result, its Mark is widely recognized and famous under US federal and state trademark laws.

Complainant alleges further that the disputed domain names are confusingly similar to its Mark and domain name on grounds that they comprise the addition of simple descriptive words to its Mark and that these additions are insufficient to distinguish them.

Complainant alleges further that Respondent has no right nor any legitimate interest in the disputed domain names on grounds that Respondent has never been commonly known by the disputed domain names, nor has it acquired any trade mark or service mark rights to the disputed domain names, nor is it a licensee of Complainant, nor has it otherwise received Complainant’s permission or consent to use its Mark.

In March 2004, Complainant provides evidence that it wrote to the original registrant of most of the disputed domain names, a Mr. Henry Chan [hereinafter “Mr. Chan], informing him that it was unlawful to use the disputed domain names, but claims that it received no response from him. In June 2004, Complainant alleges that it learned that the disputed domain names had been transferred to Respondent.

On June 16, Complainant sent a “cease and desist” letter by Federal Express to Respondent that was subsequently returned “undeliverable.” On July 7, 2004, Complainant sent the same letter by email to Respondent, to which it alleges it did not receive a reply.

Concurrently, Complainant sent a further letter by Federal Express to Mr. Chan, on the assumption that Mr. Chan remained in association with Respondent, but this was also returned “undeliverable.” Complainant alleges that in addition it sent a letter by First Class Mail and an email to Mr. Chan, but received no reply to either.

Complainant maintains that Respondent is using the disputed domain names in bad faith. In particular, it claims that Respondent has not constructed an active web page at any of the links associated with the disputed domain names, indicating that it is making a legitimate non-commercial or fair use of the disputed domain names. Complainant claims as well that Respondent’s intention is merely to disrupt Complainant’s business, to divert Complainant’s consumers and to tarnish Complainant’s Mark.

Complainant argues that Mr. Chan, Respondent’s predecessor in interest, was a “cybersquatter” who registered domain names that were confusingly similar to the trademarks and trade names of other famous corporations and was ordered to transfer those names to the rightful owners. See Microcourt Limited v. Mr. Henry Chan, WIPO Case No. D2004-0075; Rock Financial, a Quicken Loans Company v. Henry Chan, NAF Claim No. FA00167917.

Complainant concludes that, when a domain name contains a distinctive coined term (such as “Comerica”), no other action, aside from registering the domain name, is required for a finding of bad faith by Respondent.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Respondent’s domain names in dispute are confusingly similar to the trade and service Marks of Complainant contrary to Paragraph 4(a)(i) of the Policy. All the domain names in dispute have their roots in the phrase “Comerica”. Each name adds a descriptor to that phrase; but the result in all instances is a name that is insufficiently distinguishable from Complainant’s Mark to avoid the inference that it lacks distinctiveness, See e.g., Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164. Were the phrase “Comerica” in common usage, or used in a manner or context unrelated to Complainant’s Name, or if it conveyed a thought or action independent of that Name, it conceivably could have been distinctive enough to survive the “identical or confusingly similar” test; but there is no basis to so conclude in this case.

B. Rights or Legitimate Interests

Respondent has no right to or legitimate interest in the disputed domain names. It has not been known by these names. It has not used them to acquire any trade or service mark rights. Nor does Respondent have any legal relationship by which it can claim any rights through Complainant. Indeed, Complainant has neither consented to nor acquiesced in the use of those names; rather Complainant has sought to protect its name through a series of communications to the Respondent, disputing the latter’s right to and legitimate interest in those names. Respondent has not replied.

C. Registered and Used in Bad Faith

The Panel will deal with the issue of bad faith registration and bad faith use separately below.

Respondent has registered the disputed domain names in bad faith. Respondent has done more than copy a famous Mark. Respondent has sought to replicate Complainant’s persona by purporting to appropriate Complainant’s established and widely recognized Mark. In particular, Respondent has registered a series of domain names that are rooted in a name that is neither generic nor identified with an idea, practice, or activity that is distinguishable from the business and custom of Complainant. Comerica is not a word that is in common use. Nor is it identified with a legitimate business or activity apart from the business of Complainant. By adding such words as “banking” “retire” and “web” to “Comerica” in the disputed domain names, the only reasonable conclusion to draw is that Respondent has deliberately sought to appropriate Complainant’s name with a view to using that name in some future venture, whether by selling the disputed domain names to others, by purporting to provide a service related to Complainant’s business, or by engaging in some other unlawful design. See e.g, Panavision Int’l L.P. v. Toeppen. 945 F. Supp 1296 (C.D. Cal. 1996).

Whether Respondent has used Complainant’s name in bad faith is less clearly evident on the facts. Indeed, Respondent’s conduct is distinctive in the fact that it has registered, but does not appear to have used, the domain names in dispute in any distinctive way. There is no evidence that Respondent has used the domain name to attract Complainant’s customers to Respondent’s business, nor even that Respondent has any business at all, other than registering the disputed domain names for some as yet undetermined design. No evidence has been adduced that Respondent has sought to sell the disputed domain names to others, although Respondent has purchased or otherwise secured the disputed domain names from another, a Mr. Chan. Nor has Respondent sought to extract a sales price from Complainant; but instead has remained wholly silent in the face of Complainant’s protestations about the registration of the disputed domain names. No matter. What can reasonably be concluded is that Respondent is a cybersquatter even though his exact purpose is as yet undetermined, other than to deliberately appropriate Complainant’s name. This is a classic case of passive holding, as outlined in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Should Respondent be required to relinquish the disputed domain names in the absence of its explicit use of them? I think so. The very act of having acquired them raises the probability of Respondent using them in a manner that is contrary to Complainant’s legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such disputed names can be put that would not violate Complainant’s rights. See eg. Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. To argue that Complainant should have to wait for some future use of the disputed domain names to occur in order to demonstrate Respondent’s bad faith use is to render intellectual property law into an instrument of abuse by the Respondent. The result would be the likelihood of the accumulation and use of disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainant’s goodwill and business. The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does not negate Respondent’s bad faith. On the contrary, it raises the specter of continuing bad faith abuse by Respondent of Complainant’s Mark, name and related rights and legitimate business interests.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that all the domain names below be transferred to Complainant:

<comericabanking.com>
<comericatastefest.com>
<comericajob.com>
<comericaonlinebanking.com>
<comericawebanking.com>
<comericaweb.com>
<retirecomerica.com>
<webbankingcomerica.com>.

Leon Trakman
Sole Panelist

Dated: October 18, 2004