Bank of America Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2007001906597
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, United States of America (“United States”). Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <portal-bankofamerica.com> (the disputed domain name”), registered with GoDaddy.com, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2020; the Forum received payment on July 30, 2020.
On July 31, 2020, the Registrar confirmed by e-mail to the Forum that the <portal-bankofamerica.com> disputed domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@portal-bankofamerica.com. Also on August 5, 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 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a financial institution providing banking, investment, wealth management, and other financial products and services. Complainant has rights in the BANK OF AMERICA trademark based on the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 853,860, registered July 30, 1968) (the “Bank of America Mark”). The disputed domain name is confusingly similar to the Bank of America Mark since it merely adds the word “portal” to the BANK OF AMERICA Mark.
Respondent does not have rights or legitimate interests in the disputed domain name because the disputed domain name is not a legitimate name of Respondent and Complainant has not licensed or permitted Respondent to use the BANK OF AMERICA Mark.
Respondent registered and is using the disputed domain name in bad faith. Among other conduct exhibiting bad faith, Respondent has displayed a pattern of bad faith domain name registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights in the Bank of America Mark. The Disputed Domain Name is confusingly similar to Complainant’s Bank of America Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the Disputed Domain Name and that Respondent registered and is using the Disputed Domain Name in bad faith.
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 disputed 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 disputed domain name; and
(3) the disputed domain name was 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 Panel finds that Complainant has rights in the BANK OF AMERICA Mark under Policy ¶ 4(a)(i). Complainant has rights in the BANK OF AMERICA Mark based upon registration with the USPTO (e.g., Reg. No. 853,860, registered July 30, 1968). Registration with the USPTO is generally sufficient to establish rights in a mark per the Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The disputed domain name is confusingly similar to the BANK OF AMERICA Mark. Respondent’s disputed domain name incorporates the BANK OF AMERICA Mark in its entirety, preceded by the dictionary term “portal” connected by a hyphen, and followed by the generic top-level domain (“gTLD”) “.com”. The addition of a descriptive or dictionary term and a gTLD does not distinguish a disputed domain name from a trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a descriptive term and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). In addition, the fact that there is a hyphen preceding the disputed domain name does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the BANK OF AMERICA Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(ii) based upon Respondent’s pattern of bad faith domain name registration. Evidence of previous UDRP decisions against a respondent establishes a pattern of bad faith registration and creates a presumption of bad faith under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondent’s previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Respondent has registered and is using domain names containing well-known third party trademarks. Complainant provides a list of UDRP decisions rendered against Respondent, establishing Respondent’s bad faith.
Second, Respondent’s bad faith registration and use of the disputed domain name is established by the fact that (i) the disputed domain name fully incorporates Complainant’s BANK OF AMERICA Mark in its entirety; (ii) the disputed domain name was registered by Respondent long after Complainant’s established rights in the BANK OF AMERICA Mark; and (iii) Respondent has used the disputed domain name to intentionally redirect Internet users to a click-through-revenue website that consists of hyperlinks connecting to Complainant’s competitors.
Finally, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or other online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <portal-bankofamerica.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: September 4, 2020
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