Bank of America Corporation v. Yan Xiao Lin / Meng Dan Qian
Claim Number: FA2110001969956
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Yan Xiao Lin / Meng Dan Qian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bankofamericapaycard.com>, <securitycodebankofamerica.com>, <bankofamericaonlinelogin.com>, <bankofamericae.com>, <bankofamericaonlinebankinglogin.com>, <locatorsbankofamerica.com>, <foreclosuresbankofamerica.com>, <bankofamericahsaaccount.com>, <bankofamericanmortgage.com>, <bankofamericapay.com>, <bankofamericasignon.com>, <bankofamericaactivatedebitcard.com>, <mybankofamericacard.com>, <mybankofamericacreditcard.com>, <realestatecenterbankofamerica.com>, <bankofamericatexas.com>, and <bofamastercard.com> (collectively “Domain Names”), registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2021; the Forum received payment on October 20, 2021.
On November 4, 2021, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <bankofamericapaycard.com>, <securitycodebankofamerica.com>, <bankofamericaonlinelogin.com>, <bankofamericae.com>, <bankofamericaonlinebankinglogin.com>, <locatorsbankofamerica.com>, <foreclosuresbankofamerica.com>, <bankofamericahsaaccount.com>, <bankofamericanmortgage.com>, <bankofamericapay.com>, <bankofamericasignon.com>, <bankofamericaactivatedebitcard.com>, <mybankofamericacard.com>, <mybankofamericacreditcard.com>, <realestatecenterbankofamerica.com>, <bankofamericatexas.com>, and <bofamastercard.com> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 November 11, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of December 2, 2021 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@bankofamericapaycard.com, postmaster@securitycodebankofamerica.com, postmaster@bankofamericaonlinelogin.com, postmaster@bankofamericae.com, postmaster@bankofamericaonlinebankinglogin.com, postmaster@locatorsbankofamerica.com, postmaster@foreclosuresbankofamerica.com, postmaster@bankofamericahsaaccount.com, postmaster@bankofamericanmortgage.com, postmaster@bankofamericapay.com, postmaster@bankofamericasignon.com, postmaster@bankofamericaactivatedebitcard.com, postmaster@mybankofamericacard.com, postmaster@mybankofamericacreditcard.com, postmaster@realestatecenterbankofamerica.com, postmaster@bankofamericatexas.com, postmaster@bofamastercard.com. Also on November 11, 2021, the Chinese and English language 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 December 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the named entity which controls the <securitycodebankofamerica.com> domain name, Yan Xiao Lin, is effectively controlled by the same person and/or entity as the entity that controls the remaining Domain Names, Meng Dan Qian, which is operating under several aliases. 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.”
Complainant contends that the registrants for the Domain Names are related because the <securitycodebankofamerica.com> domain name was registered on the same date as one of the other Domain Names, was registered with the same Registrar, and resolves to an essentially identical pay-per-click website that offers links to banking businesses that directly compete with Complainant. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that two unconnected entities would register multiple domain names on the same day, with the same Registrar and point them to essentially identical websites.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” in this Decision.
Preliminary Issue: Language of Proceeding
The language of the Registration Agreements in this case is Chinese. The Complaint is in English and Complainant requests that pursuant to UDRP Rule 11(a) the language of the proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. Each of the Respondent’s Websites is entirely in English. Furthermore, the Domain Names themselves contain English words and phrases. The Panel also notes the absence of any response by Respondent indicating a preference that the proceeding continue in Chinese. After considering the circumstances of the present case, the Panel decides that the proceeding should be continued in the English language.
A. Complainant
Complainant, Bank of America Corporation, operates one of the world’s largest financial institutions, serving over 49 million consumers in the United States alone. Complainant has rights in the BANK OF AMERICA and BOFA marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., BANK OF AMERICA – Reg. 853,860, registered Jul. 30, 1968; BOFA – Reg. 4,210,429, registered Sep. 18, 2012). Respondent’s <bankofamericapaycard.com>, <securitycodebankofamerica.com>, <bankofamericaonlinelogin.com>, <bankofamericae.com>, <bankofamericaonlinebankinglogin.com>, <locatorsbankofamerica.com>, <foreclosuresbankofamerica.com>, <bankofamericahsaaccount.com>, <bankofamericanmortgage.com>, <bankofamericapay.com>, <bankofamericasignon.com>, <bankofamericaactivatedebitcard.com>, <mybankofamericacard.com>, <mybankofamericacreditcard.com>, <bankofamericatexas.com>, <realestatecenterbankofamerica.com>, and <bofamastercard.com> domain names are identical or confusingly similar to Complainant’s BANK OF AMERICA and/or BOFA marks, each containing one of Complainant’s marks in its entirety and merely adding generic, descriptive, and/or geographic terms before adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Names as it is not commonly known by the Domain Names and is neither an authorized user or licensee of Complainant’s BANK OF AMERICA or BOFA marks. Additionally, Respondent does not use the Domain Names for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, instead each of the Domain Names resolves to the Respondent’s Websites being parked websites with pay-per-click links which redirect Internet users to third-party websites, some of which offer banking services which compete directly with Complainant’s business.
Respondent registered and used the Domain Names in bad faith. Respondent uses the Domain Names to redirect Internet users to parked websites offering pay-per-click hyperlinks, some of which link to Complainant’s competitors. Such use may demonstrate bad faith registration and use of the Domain Names. Additionally, Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the BANK OF AMERICA and BOFA marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BANK OF AMERICA and BOFA marks. Each of the Domain Names is confusingly similar to one of Complainant’s BANK OF AMERICA or BOFA marks. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 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”).
Complainant has rights in the BANK OF AMERICA and BOFA marks through registration with the USPTO (e.g., BANK OF AMERICA – Reg. 853,860, registered Jul. 30, 1968; BOFA – Reg. 4,210,429, registered Sep. 18, 2012). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that each of the Domain Names is confusingly similar to one of the BANK OF AMERICA and BOFA marks as they each incorporate one of the marks in its entirety while adding generic and/or geographic terms (“texas”, “mortgage” and “security code” for example), or the letter “e”, and the “.com” gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. 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 generic or descriptive phrase and top-level domain); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name is confusingly similar to the BANK OF AMERICA mark because it contains the entire mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BANK OF AMERICA or BOFA marks. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Yan Xiao Lin / Meng Dan Qian” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names resolve to websites featuring pay-per-click links to third party websites, some of which purport to offer competing banking services to Complainant. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between April and September 2021, Respondent had actual knowledge of Complainant’s BANK OF AMERICA and BOFA marks. Each of the Domain Names resolves to a website that contains pay-per-click links that purport to offer banking services, being the business that Complainant trades in. Furthermore, it is improbable that a party would register 17 domain names containing either Complainant’s BANK OF AMERICA or BOFA marks (and in some cases words directly describing Complainant’s services) in the absence of any awareness of these marks. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s BANK OF AMERICA and BOFA marks for commercial gain by using the confusingly similar Domain Names to resolve to websites containing advertisements and links to third party websites for commercial gain. Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamericapaycard.com>, <securitycodebankofamerica.com>, <bankofamericaonlinelogin.com>, <bankofamericae.com>, <bankofamericaonlinebankinglogin.com>, <locatorsbankofamerica.com>, <foreclosuresbankofamerica.com>, <bankofamericahsaaccount.com>, <bankofamericanmortgage.com>, <bankofamericapay.com>, <bankofamericasignon.com>, <bankofamericaactivatedebitcard.com>, <mybankofamericacard.com>, <mybankofamericacreditcard.com>, <realestatecenterbankofamerica.com>, <bankofamericatexas.com>, and <bofamastercard.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: December 13, 2021
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