Bank of America Corporation v. boapo woipe / Sprungger Bunger
Claim Number: FA2007001906541
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, United States of America. Respondent is boapo woipe / Sprungger Bunger (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bofa-ticket.com> and <support-boa.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2020; the Forum received payment on July 29, 2020.
On July 29, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <bofa-ticket.com>, ,<support-boa.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2020 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@bofa-ticket.com, postmaster@support-boa.com. Also on July 30, 2020, 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 August 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Bank of America Corporation, is a large financial institution that provides banking, investment, wealth management and other financial products and services. Complainant asserts rights in the BOFA and BA marks through its registration of the marks with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., BOFA - Reg. No. 4,210,429, registered on September 18, 2012; BA – Reg. No. 3,264,636 registered on July 17, 2007). See Compl. Ex. M. Respondent’s <bofa-ticket.com> and <support-boa.com> domain names are confusingly similar to Complainant’s mark because they incorporate the mark in its entirety or omit the letter “f” in the mark and add the terms “support” or “ticket.”
Respondent lacks rights or legitimate interests in the <bofa-ticket.com> and <support-boa.com> domain names. Respondent is not commonly known by the disputed domain names nor has Complainant authorized Respondent’s use of the BOFA and BA marks. Additionally, Respondent fails to use the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to pass off as Complainant in furtherance of a phishing scheme.
Respondent registered and uses the<bofa-ticket.com> and <support-boa.com> domain names in bad faith. Respondent uses the domain name to attract users familiar with Complainant to its own website for financial gain. Respondent also concealed its identity when registering the domain names. Finally, Respondent registered the domain names with knowledge of Complainant’s rights in the BOFA and BA marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a large financial institution that provides banking, investment, wealth management and other financial products and services.
2. Complainant has established its trademark rights in the BOFA and BA marks through its registration of the marks with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., BOFA - Reg. No. 4,210,429, registered on September 18, 2012; BA – Reg. No. 3,264,636 registered on July 17, 2007).
3. Respondent registered the <bofa-ticket.com> and the <support- boa.com>domain names on July 28, 2020 and July 22, 2020, respectively.
4. Respondent uses the domain names to pass itself off as Complainant in furtherance of a phishing scheme.
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 and is being used in bad faith.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts rights in the BOFA and BA marks through its registration of the marks with multiple trademark agencies including the USTPO. Registration of a mark with multiple trademark agencies around the world is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Complainant provides evidence of its registration with the USPTO (e.g., BOFA - Reg. No. 4,210,429, registered on September 18, 2012; BA – Reg. No. 3,264,636 registered on July 17, 2007). See Compl. Ex. M. Therefore, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BOFA or BA marks mark. Complainant argues that Respondent’s<bofa-ticket.com> and <support-boa.com> domain names are confusingly similar to Complainant’s marks because the disputed domain names incorporate the BOFA and BA marks in their entirety or omit the letter “f” and add the words “ticket” or “support”. Respondent also adds a hyphen and the “.com” gTLD to the marks to form the disputed domain names. The addition of a generic or descriptive term, a hyphen, and a gTLD is generally not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Additionally, omitting a letter from a mark is not enough to save a disputed domain name from a finding of confusing similarity. See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BOFA and BA trademarks and to use them in its domain names in the manner described above;
(b) Respondent registered the <bofa-ticket.com> and the <support- boa.com>domain names on July 28, 2020 and July 22, 2020, respectively;
(c) Respondent uses the domain names to pass itself off as Complainant in furtherance of a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <bofa-ticket.com> and <support-boa.com> domain names, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BOFA or BA marks. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain names shows the registrant’s name is “boapo woipe / Sprungger Bunger” and nothing in the record indicates that Respondent is licensed to use Complainant’s marks or is known by the disputed domain name. See Compl. Ex. A. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent fails to use the <bofa-ticket.com> and <support-boa.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to pass itself off as Complainant in furtherance of a phishing scheme. Use of disputed domain names in furtherance of a fraudulent scheme is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, Complainant argues Respondent uses the domain names to direct Internet users to confusingly similar webpages that copy both Complainant’s mark and a password portal used by Complainant in order to gain access to Internet users’ private information. See Compl. Ex. Q and R. Thus, the Panel agrees that Respondent’s use of the domain names indicates it lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <bofa-ticket.com> and <support-boa.com> domain names in bad faith. Respondent’s use of the Complainant’s well known mark signals an intent to deceive, which is evidence of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”) Complainant argues that Respondent intentionally targeted the BOFA mark to create a likelihood of confusion in order to attract Internet users familiar with Complainant for its own financial gain. As the Panel agrees, the Panel may find that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent registered the domain names with actual knowledge of Complainant’s rights in the BOFA and BA marks. Knowledge of a mark may indicate bad faith and can be established by Respondent’s use of the mark. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). As previously noted, Complainant argues Respondent uses the domain names to direct Internet users to confusingly similar webpages that copy both Complainant’s mark and a password portal used by Complainant. See Compl. Ex. Q and R. The Panel finds this is evidence of bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BOFA and BA mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bofa-ticket.com> and <support-boa.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 21, 2020
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