The Respondent has used the domain name for a bona fide site about domains names. He picked the domain name becuase it was a contraciton of "Domain" and "America". The complainant didn't even own a trademark for DOMERICA. It only had one for Comerica - a bank! The Respondent never even had banking ads on there. Just goes to show you that you need a domain name lawyer in these kind of cases.
The panelist was Harrie R. SAMARAS.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comerica Incorporated v. Charles M. Hatcher
Case No. D2012-1375
1. The Parties
Complainant is Comerica Incorporated of Dallas, Texas, United States of America ("U.S."), represented by Bodman PLC, U.S.
Respondent is Charles M. Hatcher of Raceland, Kentucky, U.S., represented pro se.
2. The Domain Name and Registrar
The disputed domain name <domerica.com> ("the Domain Name") is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 5, 2012. On July 6, 2012, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On July 9, 2012 and July 13, 2012, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2012. The Response was filed with the Center on July 30, 2012.
On August 8, 2012, the Center appointed Harrie R. Samaras as the sole panelist in this matter. 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. On August 9, 2012 the Center received Complainant’s Supplemental Filing.
4. Factual Background
Complainant is a financial services company headquartered in Dallas, Texas. It is one of the twenty-five largest banking companies in the U.S. It has bank locations in various states as well as Canada and Mexico. Complainant owns numerous U.S. trademark registrations including U.S. Registration No. 1,251,846 for COMERICA for use with "banking services" ("the COMERICA Mark" or "the Mark"), which it has used since 1982. Complainant also owns the registration for the domain names <comerica.com>, <comerica.net>, and <comerica.org>.
Respondent obtained the Domain Name on February 13, 2000. He works in the field of information technology, and from 2000 to 2005, Respondent was engaged in the registration and resale of generic Internet domain names for profit. When the Complaint and Response were filed, the Domain Name resolved to a website having sponsored listings. It currently resolves to a website that has a banner on the first page towards the left of the page that reads "INTERVELOP" and then in the banner to the right of the page " Internet Site Development". In the middle of the first page is the Domain Name in all capital letters "DOMERICA.COM".
5. Parties’ Contentions
The COMERICA Mark is coined, distinctive and well known based on its long-standing use. Complainant invests millions of dollars each year promoting products and services under the Mark. The Domain Name is identical or confusingly similar to the Mark because it is nearly identical but for the substitution of the letter "d" for the first letter "c." This would be a common typographical error made by consumers attempting to type in "comerica".
Respondent has no rights or legitimate interests in the Domain Name because there is no evidence of Respondent’s use of the Domain Name in connection with a bona fide offering of goods or services; Respondent has not acquired trademark or service mark rights in DOMERICA; Respondent has not been commonly known by DOMERICA; Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain; and Complainant has not licensed or otherwise permitted Respondent to use the Domain Name.
Respondent must have known of the Mark when he registered the Domain Name because it is a well-known mark. Respondent presumably receives compensation for every visit by an Internet user to Respondent’s site. This use evidences that Respondent is using the Domain Name in bad faith. Respondent’s use of the Domain Name evidences a clear intent to disrupt Complainant’s business, deceive consumers and trade off of Complainant’s goodwill in the Mark.
In its Supplemental Filing, Complainant alleges that a review of archived web pages (Wayback Machine) shows no use of the Domain Name since 2002. The Domain Name was for sale from 2003 through 2004. Access to previous versions of the web pages associated with the Domain Name on September 25, 2004 and November 30, 2004 cannot be crawled or displayed because of robots.txt, which prevent "web crawlers and other web robots" access. By November 2, 2006, the Domain Name was used with a parking/landing page with pay-per-click links for travel services. Access to previous versions of the web pages associated with the Domain Name on November 24, 2006, March 9, 2008, April 9, 2008 and October 5, 2008 also cannot be crawled or displayed because of robots.txt. Such limited or sporadic use does not constitute rights or legitimate interests in the Domain Name. Further, registration in bad faith may be established retroactively by subsequent bad faith use.
The Domain Name is not identical or confusingly similar to the COMERICA Mark. DOMERICA and COMERICA are two separate and distinctive marks which are neither visually nor audibly similar. The different first letter is sufficient to distinguish the marks. Consumers are no more likely to confuse DOMERICA with COMERICA than they are to confuse the word "dome" with "come" or "drying" with "crying". Complainant has provided no evidence supporting its claim of confusing similarity, such as a survey or poll, or even a single case of actual confusion by a customer or potential customer. That Complainant waited 12 years to bring this action suggests that it is not aware of any such case.
The United States Patent and Trademark Office routinely grants registration of marks differing by only the first letter. Trademark registration was granted for OMERICA and PROMERICA with the latter used in the same business category as Complainant. Respondent disputes Complainant’s assertion that the Mark is famous. Complainant claims to be doing business in only a few states, not including that of Respondent.
In 2000, Respondent independently coined the distinctive mark DOMERICA as a portmanteau of the words "domains" and "america" and registered the Domain Name. Respondent conducted business using the Domain Name for its website and email for several years. Evidence of this past use is readily available at the Internet Archive.
Complainant’s business is regional and until receiving this Complaint, Respondent had never heard of it. Since DOMERICA and COMERICA are distinctive and distinguishable marks, the mere registration of the Domain Name cannot of itself be considered an act of bad faith.
While the Domain Name is currently inactive and parked, the third-party advertising displayed on the parking page is unrelated to either Complainant, to the banking business, or to financial services and is not likely to confuse visitors. Complainant has provided no evidence that Respondent acted in bad faith, either in registering the Domain Name or in using it.
Respondent requests the Panel to make a finding of bad faith on the part of Complainant because it filed this action, without any evidence of bad faith and is an attempt at Reverse Domain Name Hijacking and an abuse of the proceeding. Complainant has presented no evidence of confusion between the Mark and the Domain Name, and has cited numerous cases which are not relevant to its complaint. Complainant’s research into Respondent’s rights and legitimate interests in the Domain Name seems to have been confined to one single Google search. In the 12 years since the Domain Name was registered, Complainant has never contacted Respondent to address its concerns or to attempt an amicable resolution. At the time the complaint was filed, Complainant knew, or clearly should have known, that it could not prove the essential elements required by the UDRP.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith.
A. Supplemental Filing
Under the Policy and the Rules, parties have no right to submit additional arguments or evidence outside the Complaint and Response. The panel may, in its sole discretion however, request further statements or documents from the parties under paragraph 12 of the Rules; and a party’s request may be regarded as an invitation to the panel to exercise this discretion. Here the Panel did not request additional arguments or evidence from the parties. Thus, the Panel has the sole discretion to determine the admissibility of Complainant’s Supplemental Filing. The applicable principles for exercising this discretion have been considered in numerous cases decided under the Policy and the Rules. See e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. Complainant requests that the Panel permit its Supplemental Filing to consider new evidence or provide a fair opportunity to respond to new arguments, namely with regard to Respondent’s alleged rights and legitimate interests, and Respondent’s bad faith in registering and using the Domain Name.
In its Supplemental Filing, Complainant has provided the Panel with web pages archived by the Wayback Machine that were previously accessible by way of the Domain Name. Complainant’s characterization of the evidence as "new" is not sufficient grounds for the Panel to consider Complainant’s evidence and arguments. This is because the evidence Complainant submitted existed before Complainant filed its Complaint and likely could have been uncovered while investigating Respondent’s use of the Domain Name. In its Supplemental Filing Complainant admits the evidence was "discovered after Respondent’s response." The Panel will, however, consider the Supplemental Filing because Respondent has alleged past use of the Domain Name by virtue of one instance (one archived page) from other possible instances (other archived pages to which it has access), and has presented arguments relating to that past use, which Complainant may not have contemplated. In its Response, Respondent had the opportunity to provide the panel with whatever evidence existed of his alleged business use of the Domain Name (additional archived pages or other indicia) but did not.
B. Identical or Confusingly Similar
Complainant has provided uncontroverted evidence of its rights in the COMERICA Mark by means of its United States trademark registration.
It is common practice under the Policy to disregard generic Top Level Domains (gTLDs) such as the ".com", ".net" and ".org" portion of domain names for the purposes of determining confusing similarity under paragraph 4(a)(i) of the Policy. See, e.g., Pocket Kings Limited v. Blue Giant Holdings Inc., WIPO Case No. D2010-2059.
Respondent argues that the different first letter (i.e., "d" instead of "c") is sufficient to distinguish "Domerica" from the COMERICA Mark and that the United States Patent and Trademark Office routinely grants registration of marks differing by only the first letter. Respondent further argues that Complainant has provided no evidence supporting its claim of confusing similarity, such as a survey or poll, or even a case of actual confusion by a customer or potential customer. These arguments misunderstand the Policy and the cases applying it.
The Domain Name incorporates the COMERICA Mark in its entirety with one insignificant distinction - it switches the letter "c" for the letter "d". The substituted letter "d" is very close to the letter "c" on a conventional keyboard thus manifesting a common typographical error. Insofar as the Domain Name wholly incorporates the COMERICA Mark and typographical error, the Panel finds that it should be regarded as at least confusingly similar to Complainant’s Mark. Id. Furthermore, other UDRP panels have consistently held that "a mere addition of a minor misspelling or typographical error of a mark, does not create a new or different mark in which [r]espondent has legitimate rights." See Hobsons, Inc. v. Peter Carrington a/k/a Party Night Inc, WIPO Case No. D2003-0317. Such insignificant modification to trademarks is commonly referred to as "typosquatting" or "typo-piracy," as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
C. Rights or Legitimate Interests
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use its COMERICA Mark for any purpose. Complainant also alleges that Respondent has no rights or legitimate interests in the Domain Name because there is no evidence that: Respondent has used the Domain Name in connection with a bona fide offering of goods or services; Respondent has acquired trademark or service mark rights in DOMERICA; Respondent has been commonly known by DOMERICA; and Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Thus, Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), shifting the burden to Respondent to show by concrete evidence that he has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent’s submission appends what he terms an "affidavit", which is technically not one. In it Respondent claims that in 2000 he needed a business name so he independently coined "Domerica" as a portmanteau of the words "domains" and "america" and registered the Domain Name, which corresponds to it (<domerica.com>). Respondent has not adduced any evidence that he or his business has been commonly known by the Domain Name (Policy, paragraph 4(c)(ii)). As discussed below, he has presented the Panel with but one page from his website back in 2002 that shows the term "domerica" once on the page, not seemingly as a business name. Furthermore, Respondent’s claim that he was using "Domerica" as a business name is belied by the evidence Complainant found using the Internet Archive showing that Respondent tried to sell the Domain Name. Why would Respondent be selling the Domain Name if it is his business name? Nor has Respondent argued or adduced any evidence to demonstrate a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, as set forth in paragraph 4(c)(iii) of the Policy. This is probably because, as uncovered by Complainant, Respondent has used the Domain Name for commercial gain (i.e., for click through revenues and to sell other domain names).
It is not clear that Respondent is even relying on paragraph 4(c)(i) of the Policy but giving Respondent the benefit of the doubt the Panel has considered Respondent’s evidence in accordance with it. Respondent claims that he conducted business using the Domain Name for his website and email for several years and states that evidence of this past use is readily available at the Internet Archive. In the document Respondent calls an affidavit, he states that "[u]sing this trade name ["Domerica"] and website, I engaged in the sale of internet domain names for several years. The Internet Archive (http://www.archive.org), which archives worldwide web content, has a copy of my website as it appeared in 2002 at http://web.archive.org/web/200205301 75927/http://www.domerica.coml." Respondent provides only one page of his claimed website (http://www.domerica.com/) from the Internet Archive ("Wayback Machine") from May 2002. The only apparent use of "domerica" from this page is in the following statement: "Welcome to Domerica! . . . We are offering our collection of domain names for sale at remarkably low prices – every name is priced below $1000." This page hardly constitutes concrete evidence sufficient to support the claim that he conducted business for "several years" using the Domain Name. Likewise, in its Supplemental Filing, Complainant has attempted to marshal evidence of Respondent’s use of the Domain Name over the years, but was unable to do so because of the blocking of many pages by robots.txt. The evidence Complainant has provided the Panel shows an intermittent or sporadic use of the Domain Name for different commercial purposes (i.e., selling other domain names, sponsored links). The Panel is left to conclude that Respondent chose a domain name that infringed the rights of Complainant in order to attract Internet users to his site for financial gain. An infringing use is not a bona fide offering of goods or services. See Hoffmann-La Roche Inc. v. Alternative Identity, WIPO Case No. D2007-0152.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
Respondent claims in its "affidavit" that from the time he coined "Domerica" and registered the Domain Name until the time he received a copy of the Complaint, he had never heard of "Comerica", never seen a Comerica Bank, nor had he seen any advertising for any Comerica service. And he claims that his registration and use of the Domain Name has never had anything to do with Complainant. On this record, it is difficult to accept what Respondent posits. The Panel is of the view that Complainant’s reputation was well established long before Respondent registered the Domain Name. Complainant’s trademark is a coined, distinctive term that has been in use since the early 1980’s. Although Complainant does not do business in all states, that doesn’t mean Complainant’s advertising did not reach Respondent, national news of Complainant did not reach Respondent by way of newspaper, television or radio, or Respondent did not travel to a state in which Complainant’s business exists. Respondent claims, without more, that he coined "Domerica" taking portions of the terms "domains" and "america". There is no evidence, let alone an explanation, why Respondent would have even begun with these terms to form his "portmanteau" or why he would have happened to cleave these terms to form the word "domerica" which is but one letter off of Complainant’s COMERICA Mark. Thus, based on this record it is more likely to this Panel that Respondent registered the Domain Name in bad faith.
Respondent admits that the Domain Name has at various times over the past 8 years been "parked" and displayed third-party advertising, but he claims that his website has never displayed ads for banking services, nor has it ever displayed any content that could be construed as related to Comerica Bank. It is inconsequential that the third-party advertising was not for banking services if Respondent gained financially, which Respondent does not dispute. Indeed Respondent also benefitted financially from using the Domain Name in conjunction with his site selling other domain names. Respondent registered the Domain Name in 2000 and, thus, has had considerable time to develop its own use of the website so it cannot be said that the parking page is a temporary or holding measure. Overall, the evidence of record supports bad faith use of the Domain Name.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Reverse Domain Name Hijacking
Respondent argues that Complainant’s filing of this action, without any evidence of bad faith on his part is an attempt at reverse domain name hijacking and an abuse of the proceeding. As further support for this position Respondent argues that Complainant has not presented any evidence of confusion between the COMERICA Mark and the Domain Name, Complainant has cited numerous cases which are not relevant, Complainant’s research into the Respondent’s rights and legitimate interests was only a single Google search, and in the 12 years since Respondent registered the Domain Name, Complainant has never expressed its concerns or attempted an amicable resolution.
The Panel has considered Respondent’s request but is not persuaded that Respondent has proven a claim for reverse domain name hijacking (or abuse of the proceeding) on this record.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <domerica.com> be transferred to Complainant.
Harrie R. SamarasWIPO Domain Name Decision: D2012-1375:
Dated: August 24, 2012
Dated: August 24, 2012