Bank of America Corporation v. huston tei / beluow oeuio
Claim Number: FA2008001907471
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, United States of America. Respondent is huston tei / beluow oeuio (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bofa-support.com> and <bofa-employees.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 August 6, 2020; the Forum received payment on August 6, 2020.
On August 7, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <bofa-support.com> and <bofa-employees.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 August 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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-support.com, postmaster@bofa-employees.com. Also on August 10, 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 September 2, 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 has rights in the BOFA mark through its registration with numerous trademark offices throughout the world. (e.g. United States Patent and Trademark Office (“USPTO”) Reg. 4,210,429, registered Sept. 18, 2012; European Union Office of Harmonization in the Internal Market (“OHIM”) Reg. 8,809,345, registered July 5, 2010). See Compl. Exs. M and N. Respondent’s <bofa-support.com> and <bofa-employees.com> domain names are confusingly similar to Complainant’s BOFA mark as they incorporate the mark in its entirety and add hyphens, generic words, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <bofa-support.com> and <bofa-employees.com> domain names, as it is not commonly known by them and Complainant has not authorized or licensed Respondent to use its BOFA mark in the domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant and phish for internet user information by imitating Complainant’s own online portal.
Respondent registered and uses the <bofa-support.com> and <bofa-employees.com> domain names in bad faith. Respondent attempts to pass off as Complainant for commercial gain by attracting internet users and phishing for their information with a resolving website that mimics Complainant’s own online portal.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, there are nominally two Respondents. Complainant contends that both domain names are owned and controlled by the same Respondent and that in effect they are registered by the same domain name holder. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In support of Complainant’s contention, it submits that the domain names were both registered in very recent days through the same registrar using the same name servers and privacy service. Exhibit A , setting out the creation dates and contact and server information, is evidence of these facts. The domain names also use false contact information, but the same email service, and have both been used by Respondent as part of the same fraudulent scheme, as described more fully in Paragraphs 11-12 below, which is also the subject of separate UDRP proceedings pending with the Forum that have been filed by Complainant against Respondent involving multiple similar domain names: Bank of America Corporation v. Chase Black, Carla Bot, Mortimer Herbertson and bo bop, Case No.FA2007001905200 and Bank of America Corporation v. boapo woipe and Sprungger Bunger, Case No. FA2007001906541 (the “Prior UDRPs”). Complainant maintains that the commonalities as specified are sufficient to prove common ownership and control of both domain names. Having regard to all of those considerations and the whole of the evidence, the Panel finds the two domain names are commonly owned and/ or controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward on that basis. For reasons of convenience, the Respondents will hereafter be referred to as “Respondent”.
1. Complainant is a United States company that is one of the world’s largest financial institutions.
2. Complainant has established it trademark rights in the BOFA mark through its registration with numerous trademark offices throughout the world (e.g. United States Patent and Trademark Office (“USPTO”) Reg. 4,210,429, registered Sept. 18, 2012; and the European Union Office of Harmonization in the Internal Market (“OHIM”) Reg. 8,809,345, registered July 5, 2010).
3. Respondent registered the <bofa-support.com> and <bofa-employees.com> domain names on August 3 and August 5, 2020, respectively.
4. Respondent uses the disputed domain names to attempt to pass itself off as Complainant and to phish for internet user information by imitating Complainant’s own online portal.
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 claims rights in the BOFA mark through its registration with numerous trademark offices throughout the world. (e.g. USPTO Reg. 4,210,429, registered Sept. 18, 2012; OHIM Reg. 8,809,345, registered July 5, 2010). See Compl. Exs. M and N. Registration with the USPTO is generally sufficient to prove rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has rights in the mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BOFA mark. Complainant submits that Respondent’s <bofa-support.com> and <bofa-employees.com> domain names are confusingly similar to Complainant’s BOFA mark, as they incorporate the mark in its entirety and add a hyphen, generic or descriptive words, and the “.com” gTLD. Under Policy ¶ 4(a)(i), adding a generic word along with a hyphen and the “.com” gTLD is insufficient in differentiating a domain name from the mark it incorporates. 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.”). The disputed domain names incorporate Complainant’s mark in its entirety, and add hyphens, followed by the generic words “support” or “employees” and the “.com” gTLD. Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark under 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”).
(a) Respondent has chosen to take Complainant’s BOFA trademark and to use it in its domain names, adding the generic words “support” or “employees” which does not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <bofa-support.com> and <bofa-employees.com> domain names on August 3 and August 5, 2020, respectively;
(c) Respondent uses the disputed domain names to attempt to pass itself off as Complainant and to phish for internet user information by imitating Complainant’s own online portal;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights in the <bofa-support.com> and <bofa-employees.com> domain names, as Respondent is not commonly known by either of them, nor has Complainant authorized or licensed Respondent to use its BOFA mark in the domain names. In lieu of a response, relevant WHOIS information can demonstrate that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). The WHOIS of record identifies Respondent as “Huston Tei”, and nothing in the record rebuts Complainant’s assertions that it never authorized Respondent to use the BOFA mark in the domain names. See Compl. Ex. A; see also Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <bofa-support.com> and <bofa-employees.com> domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass itself off as Complainant in furtherance of a phishing scheme. Imitating a complainant’s website to pass off as a complainant in order to phish for internet users’ information is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (maintaining that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Here, Complainant argues that the disputed domain names’ resolving websites imitate Complainant’s own portal login, in order to obtain internet users’ personal information. Compare Compl. Ex. Q with Compl. Ex. R. As the Panel agrees, it finds Respondent lacks rights in the disputed domain names under 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 that Respondent registered and uses the <bofa-support.com> and <bofa-employees.com> domain names in bad faith by attracting for commercial gain internet users seeking Complainant’s official portal and redirecting them to the disputed domains’ resolving websites, where Respondent phishes for information by hosting a similar looking portal. Passing off as a complainant to attract internet users and phishing for personal information is considered a bad faith use under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). The Panel recalls Complainant’s screenshots of the disputed domain names’ resolving websites, which Complainant argues mimic its own portal websites in order to confuse internet users into entering personal information. Compare Compl. Ex. Q with Compl. Ex. R. As the Panel agrees, it finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the BOFA mark prior to registration of the domain names because it registered multiple domain names with the disputed mark, along with its use of resolving websites that use Complainant’s marks, logos, and similar web layouts as Complainant’s website. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). Registering identical or confusingly similar domain names and passing off as a Complainant may demonstrate actual notice under Policy ¶ 4(a)(iii). 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.”). The Panel recalls that the disputed domain names are confusingly similar to Complainant’s mark, as well as Complainant’s screenshots of the disputed domain names’ resolving websites, which resemble Complainant’s own portal pages. Compare Compl. Ex. Q with Compl. Ex. R. As the Panel agrees, it finds Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent’s use of a WHOIS privacy service further demonstrates bad faith. Under Policy ¶ 4(a)(iii), use of a privacy service may raise a rebuttable presumption that can contribute to an independent finding of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Respondent’s initial WHOIS information for both domains listed it as “WhoisGuard Protected.” See Compl. Ex. A. Respondent has done nothing to rebut any presumption from this assertion. Therefore, the Panel finds Respondent’s use of a privacy service contributes to another finding of bad faith under Policy ¶ 4(a)(iii).
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-support.com> and <bofa-employees.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 3, 2020
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