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Olympic Airways S.A. v. K. Papageorgopoulos [2005] GENDND 65 (1 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comerica Incorporated v. Brandon Le

Case No. D2004-0976

1. The Parties

The Complainant is Comerica Incorporated, of Detroit, Michigan, United States of America, represented by C. Vance Borngesser, United States of America.

The Respondent is Brandon Le, of San Jose, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <comericainc.com> is registered with AAAQ.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in electronic form on November 9, 2004, and in hard copy on November 19, 2004. On November 22, 2004, the Center transmitted by email to AAAQ.com, Inc. a request for registrar verification in connection with the domain name at issue. On November 24, 2004, AAAQ.com, Inc. transmitted by email to the Center its verification response confirming it as the registrar of the disputed domain name, that Respondent is listed as the registrant, and that the Policy is in effect in respect of the domain name, and providing contact details for the administrative, billing, and technical contacts.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 30, 2004. The Center verified that the Complaint, as amended, 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 the Respondent of the Complaint, and the proceedings commenced on December 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2004. No response was received from the Respondent.

The Center notified the Respondent’s default on December 23, 2004, and, on January 4, 2005, appointed Seth M. Reiss as the sole panelist in this matter. 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. The Panel is required to forward its decision to the Center, in accordance with paragraph 15 of the Rules, by January 18, 2005.

The Panel has examined the communications of the Center and the Complainant, and the Complaint. The Panel confirms that each complies with the formal requirements of the Policy, the Rules and the Center’s Supplemental Rules, and specifically, that the Center complied with paragraph 2(a) of the Rules in communicating the Complaint and applicable response deadline to Respondent, and with paragraph 2(b) of the Rules in notifying Respondent of his default and appointment of the panel. The Panel further confirms that the Administrative Panel was properly constituted.

The language of the proceeding is English.

4. Factual Background

Complainant, Comerica Incorporated, is one of the United States’ oldest and largest bank holding companies (NYSE: CMA) and among the 20 largest U.S. banking companies, with US $55 billion in total assets. Complainant has commercial banking offices in the U.S., Canada and Mexico.

Complainant is the owner of numerous United States registrations for its trademarks and service marks, including for the service mark COMERICA (the “Mark”), registered with the U.S. Patent and Trademark Office, Reg. No. 1,251,846 and Reg. No. 1,776,041, for “banking services”, as well as for marks consisting of the word “Comerica” together with other words and/or design elements. Complainant is also the registrant of numerous domain names that incorporate the Mark, among them, <comerica.com>, <comerica.net>, and <comerica.org>. Complainant has continuously used the Mark since 1982, and claims to invest millions of dollars every year in promotion of the products and services identified by its Mark.

The domain name <comericainc.com> (the disputed “domain name”) was registered with AAAQ.COM on October 4, 2003. The Whois database shows “Brandon Le legalshield@[e-mail address]” of San Jose, California, as registrant.

The disputed domain name resolves into a single page website featuring a photograph of several high-rise office buildings. Above the photograph is the caption “CEO/PARTNERS Henry Co & Brandon D. Le” and the words “Comerica Incorparated (sic) International.” Below the photograph are telephone numbers for the partners and the tagline “We Bringing Our Business Thousands of Miles To You...” Complainant claims that when it called the telephone number listed on the website an answering machine answered giving the company name “Globe Equity Lending.”

On March 10, 2004, Complainant sent a cease and desist letter to Respondent’s mailing address and, on March 25, 2004, Complainant sent the same letter to Respondent by email. Respondent responded to neither.

5. Parties’ Contentions

A. Complainant

Complainant contends that its COMERICA mark is a coined word that is distinctive, powerful and symbolizes the goodwill of Complainant. Complainant also submits that, as a result of Mark’s long term and extensive use and promotion, and the widespread commercial recognition of the Mark, the Mark is famous under United States federal and state trademark laws. Complaint contends that the disputed domain name, <comericainc.com>, is identical to the Complainant’s Mark.

Complainant next asserts that the Respondent has no legitimate interest in any domain name, trademark or trade name incorporating or confusingly similar to the Mark, has not used the disputed domain name in connection with a bona fide offering of goods or services, owns no trademark registrations for the disputed domain name or any portion thereof, and has not been commonly known by the disputed domain name or any portion thereof. The Complainant further asserts that it has not licensed nor otherwise permitted Respondent to use the Mark or the disputed domain name, and that the Respondent does not own and cannot lawfully obtain any trademark or intellectual property rights in the Mark or any words or phrases that incorporate or are confusingly similar to the Mark.

Complainant contends Respondent registered and is using <comericainc.com> in bad faith in that the Respondent’s action of registering the disputed domain name, and using it to direct Internet traffic to Respondent’s website, evidences a clear intent on Respondent’s part to disrupt the Complainant’s business, deceive consumers, and trade off of the Complainant’s goodwill. Given the content on Respondent’s website, and the company identified with the telephone number listed on that site, Complainant believes Respondent registered and is using the disputed domain name to either damage Complainant’s business through the diversion of its customers elsewhere, or for commercial gain, by acquiring fees or commissions for referrals. Complainant submits that the disputed domain name, and the website that resides thereat, create a strong likelihood of confusion with Complainant and its COMERICA mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Complainant characterizes Respondent’s use of the disputed domain name as a blatant attempt to misappropriate Complainant’s well-established, famous Mark.

Complainant requests, by way of relief, that the domain name <comericainc.com> be transferred to Complainant.

B. Respondent

As noted above, no response to Complainant’s allegations was received from Respondent in this proceeding.

6. Discussion and Findings

Pursuant to Paragraph 4(a) of the Policy, the Complainant has the burden of establishing the existence of the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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: Policy 4(a)(i)

Complainant has established that it holds rights in the mark COMERICA within the United States. Complainant holds rights in the Mark by virtue of its numerous federal registrations, Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503 (July 18, 2000), as well as through Complainant’s continuous use of the Mark on and in conjunction with services including in domain names associated with websites used for publicity and services, Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133 (December 12, 2000).

Complainant contends, and this Panel agrees, that COMERICA is a coined or invented word, i.e., not a word found in an English dictionary. Coined or fanciful marks are among the strongest varieties of marks and, consequently, are generally accorded strong protection against infringement. See, e.g., 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, chapter 11 (4th 2004). A corollary is that domain names incorporating fanciful marks belonging to others may be evidence of a deliberate attempt to misappropriate the mark and accompanying goodwill. Empresa Brasileira de Telecomunicações S.A. – Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164 (May 15, 2000); Panavision Int’l, L.P. v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996).

The disputed domain name <comericainc.com> is virtually identical to the Mark in which Complainant holds rights. Incorporation of a trademark in its entirety is sufficient, in most cases, to establish that a domain name is identical or confusingly similar to a complainant’s mark. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001). Combining the Complainant’s mark with a generic term such as “inc.” fails to distinguish the domain name from the mark and, according to some WIPO panels, serves merely to aggravate the likely confusion. See, e.g., Volvo Trademark Holding AB v. e-motodealer, Ltd., WIPO Case No. D2002-0036 (March 22, 2002). Considering Complainant’s business name is Comerica Incorporated, adding the “inc” abbreviation to the end of the “Comerica” does nothing to distance the domain name from Complainant, nor mitigate the likelihood of confusion and deception.

The addition of a top-level domain, in this case “.com”, to a trademark results in a domain name that is identical to the trademark for purposes of paragraph 4(a)(i) of the Policy. ACCOR v. PC Communication Ltd., Pierre Jean, WIPO Case No. D2000-1580 (January 18, 2001).

The Panel therefore finds that the domain name <comericainc.com> is identical or confusingly similar to the COMERICA mark in which Complainant holds rights and that Complainant has established element (i) of the Policy’s paragraph 4(a).

B. Rights or Legitimate Interests: Policy 4(a)(ii)

There is no evidence that Respondent is an authorized agent or licensee of the Complainant or of Complainant’s products or services, or that Respondent has other authority or permission to use Complainant’s COMERICA mark in his domain name.

Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to complainant’s mark, and that complainant has not authorized respondent to use the mark, the burden shifts to respondent to establish some right or legitimate interest in respect of the domain name. Sony Kabushiki Kaisha v. Sony.net, WIPO Case No. D2000-1074 (November 28, 2000). By not submitting a response, Respondent has failed to invoke any circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some right or legitimate interest in the disputed domain name. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323 (June 29, 2004).

Complainant argues that, given the fame of its COMERICA mark, Respondent could not make any legitimate use of the word COMERICA without infringing upon Complainant’s rights in the Mark. This Panel agrees with Complainant that Respondent could not make any commercial use of the invented word COMERICA in the context of banking and finance services without necessarily infringing upon Complainant’s rights. Considering that Respondent appears to be using the disputed domain name in just such a manner, Respondent’s use does not create any right or legitimate interest in Respondent.

As the record is devoid of evidence demonstrating a right or legitimate interest of Respondent in respect of the disputed domain names, the Panel finds that element (ii) of the Policy’s paragraph 4(a) has also been established.

C. Registered and Used in Bad Faith: Policy 4(a)(iii)

Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that Respondent both registered and is using the disputed domain names in bad faith. Paragraph 4(b) of the Policy iterates four non-exclusive circumstances that give rise to an evidentiary presumption of bad faith registration and use on the part of a respondent. A complainant need only demonstrate the existence of one of these circumstances in order to meet its burden under the third element of the Policy. Complainant here claims to have demonstrated the following two paragraph 4(b) circumstances:

(iii) That Respondent registered the domain name primarily for the purpose of disrupting the Complainant’s business; and

(iv) That by using the disputed domain name, Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or of a product or service on Respondent’s web site.

Other panels have concluded that, in certain limited situations when a domain name incorporates a famous mark comprised of a coined or fanciful term, no other active use, aside from registering the domain name, is required for a finding of bad faith. This is based upon the premise that “it would be difficult, perhaps impossible, for Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights.” Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000). See also Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (December 9, 2000) (that Sony was a fanciful mark and perhaps the third most recognized brand in the Western world constituted strong indicia that respondent had registered and was using domain names incorporating the Sony mark in bad faith). A finding that a respondent ignored the fact that it was infringing on the rights of a well-known trademark has been held as enough to support a claim of bad faith. Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763 (July 10, 2001).

Pursuant to paragraph 14(b) of the Rules, the Panel has discretion to draw such inferences from Respondent’s default as the Panel considers appropriate. This Panel agrees with Complainant that it would have been inconceivable for Respondent not to have been aware of the COMERICA mark and Complainant’s rights therein when Respondent registered the disputed domain name on October 4, 2003. Given Respondent’s apparent use of the disputed domain name in conjunction with a commercial website concerned with banking related services, there is no question but that Respondent is using the <comericainc.com> domain name to misappropriate and trade on Complainant’s COMERICA mark and associated goodwill.

This Panel is persuaded, based upon the record in this case, that Respondent both registered and is using the disputed domain name in bad faith and that element (iii) of the Policy’s paragraph 4(a) has also been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel concludes that the relief requested in the Complaint should be granted and orders that the domain names <comericainc.com > be transferred to Complainant Comerica Incorporated.

Seth M. Reiss
Sole Panelist

Dated: January 17, 2005