Bank of America Corporation v. lin yanxiao
Claim Number: FA2203001987947
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is lin yanxiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bankofamericansignin.com>, <bankofamericaatm.com>, <bankofaemrcia.com>, <bankofamericea.com>, <bankofamericacreditscore.com>, <bankofamericafullsite.com>, <bankofamericaunemploymentcard.com>, and <bankofamericafsa.com>, registered with Dynadot, LLC.
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 Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 11, 2022; the Forum received payment on March 11, 2022.
On March 13, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <bankofamericansignin.com>, <bankofamericaatm.com>, <bankofaemrcia.com>, <bankofamericea.com>, <bankofamericacreditscore.com>, <bankofamericafullsite.com>, <bankofamericaunemploymentcard.com>, and <bankofamericafsa.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 March 16, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2022 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@bankofamericansignin.com, postmaster@bankofamericaatm.com, postmaster@bankofaemrcia.com, postmaster@bankofamericea.com, postmaster@bankofamericacreditscore.com, postmaster@bankofamericafullsite.com, postmaster@bankofamericaunemploymentcard.com, postmaster@bankofamericafsa.com. Also on March 16, 2022, 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 April 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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, operates one of the world’s largest financial institutions. Complainant has rights in the BANK OF AMERICA mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 853,860, registered Jul. 30, 1968). See Compl. Ex. J. Respondent’s <bankofamericansignin.com>, <bankofamericaatm.com>, <bankofaemrcia.com>, <bankofamericea.com>, <bankofamericafullsite.com>, <bankofamericafsa.com>, <bankofamericaunemploymentcard.com>, and <bankofamericacreditscore.com> domain names (“the disputed domain names”) are all identical or confusingly similar to Complainant’s BANK OF AMERICA mark as each domain name contains the BANK OF AMERICA mark in its entirety and adds some generic term (“signin,” “ATM,” “full site,” “credit score,” and “unemployment card”) or letters either within the mark or after the mark and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the disputed domain names as it is not commonly known by the disputed domain names and is neither an authorized user or licensee of the BANK OF AMERICA mark. Additionally, Respondent fails to use any of the disputed domain names for a bona fide offer of goods or services, nor for any legitimate noncommercial or fair use as Respondent uses each of the disputed domain names to host pay-per-click links, some of which offer links to products and services which directly compete with Complainant’s business.
Respondent registered and uses the disputed domain names in bad faith. First, Respondent has offered the disputed domain names for sale. Next, Respondent’s registration of numerous infringing domain names demonstrates bad faith. Additionally, Respondent uses each of the domain names to redirect Internet users to websites offering monetized hyperlinks to Complainant’s competitors. Several of the disputed domain names are examples of typosquatting, which also shows bad faith. Finally, Complainant contends that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the BANK OF AMERICA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates one of the world’s largest financial institutions.
2. Complainant has established its rights in the BANK OF AMERICA mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 853,860, registered Jul. 30, 1968).
3. Respondent registered the disputed domain names on the following dates:
<bankofamericansignin.com>, March 29, 2021; <bankofamericaatm.com>, March 8, 2021;<bankofaemrcia.com>, March 29,2021;<bankofamericea.com>,March 29, 2021;<bankofamericacreditscore.com>, March 09, 2021;<bankofamericafullsite.com>,March 27, 2021; <bankofamericaunemploymentcard.com>,March 08, 2021 and <bankofamericafsa.com>, March 29, 2021.
4. Respondent uses each of the disputed domain names to host pay-per-click links, some of which offer links to products and services which directly compete with Complainant’s business.
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 submits that it has rights in the BANK OF AMERICA mark through its registration of the mark with the USPTO (e.g., Reg. No. 853,860, registered Jul. 30, 1968). See Compl. Ex. J. Registration of a mark with a nation’s trademark authority, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Spotify AB v. Olodo Glory / Sutherland, FA 2106001951577 (Forum July 15, 2021) (“Complainant’s registration of the SPOTIFY mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i).”). As Complainant has adduced evidence of its registration of the mark with the USPTO, the Panel finds that Complainant has rights in the BANK OF AMERICA mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BANK OF AMERICA mark. Complainant argues that the disputed domain names are identical or confusingly similar to Complainant’s BANK OF AMERICA mark, as each domain name incorporates the entire BANK OF AMERICA mark, merely adding some generic term, a variety of letters, and adding the “.com” gTLD. Alternatively, some of the disputed domain names misspell the BANK OF AMERICA mark. Such changes do not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Thus, the Panel finds the disputed domain names are identical or confusingly similar to Complainant’s BANK OF AMERICA 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 BANK OF AMERICA mark and to use it in its domain names adding a generic term, a variety of letters or misspelling the BANK OF AMERICA mark;
(b) Respondent registered the domain names on the respective dates set out above;
(c) Respondent uses each of the disputed domain names to host pay-per-click links, some of which offer links to products and services which directly compete with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names and is neither an authorized user or licensee of the BANK OF AMERICA mark. When response is lacking, Panels have looked to relevant WHOIS information to determine whether a Respondent is commonly known by an infringing domain name pursuant to Policy ¶ 4(c)(ii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use another’s trademark may demonstrate lack of rights in a domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information of record identifies “lin yanxiao” as the registrant of each of the disputed domain names, and nothing within the record indicates that Complainant authorized Respondent’s use of the BANK OF AMERICA mark to register the disputed domain names. See Compl. Ex. A; see also Amend. Compl. Ex. Q. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent fails to use the disputed domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead to host pay-per-click websites directing visitors to Complainant’s competitors. Such use generally does not qualify as either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of all landing pages for the disputed domain names apart from <bankofamericafullsite.com>, all of which are used to display pay-per-click hyperlinks. See Compl. Ex. M. Upon investigation, the <bankofamericafullsite.com> domain name redirects to an inactive webpage. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Therefore, the Panel finds Respondent lacks rights and legitimate interests 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 does not have a right or legitimate interest 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 disputed domain names in bad faith because Respondent has offered to sell the disputed domain names. Under Policy ¶ 4(b)(i), registering and offering to sell an infringing domain name may tend to show relevant bad faith, usually together with other factors. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Here, Complainant provides evidence that Respondent has offered several of the domain names for sale. See Compl. Exs. A & N. In all the circumstances of the present case, the Panel finds bad faith registration and use under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent’s registration of eight domain names which contain the BANK OF AMERICA mark further demonstrates bad faith. Registration of multiple infringing domain names within the same proceeding may provide evidence of a pattern of bad faith registrations under Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”). Here, the Panel finds bad faith under Policy ¶ 4(b)(ii) based on Respondent’s registration of eight infringing domain names.
Thirdly, Complainant argues that Respondent uses the disputed domain names to disrupt Complainant’s business and attract commercial gain. In particular, Complainant argues that Respondent uses the disputed domain names to display monetized hyperlinks to Complainant’s competitors, which is both disruptive and likely to attract revenue for Respondent under Policy ¶¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). The Panel again notes the screenshots of the disputed domain names adduced in evidence by Complainant. See Compl. Ex. M. As Respondent uses the disputed domain names to host click-through hyperlinks to Complainant’s competitors, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Fourthly, Complainant argues that several of the disputed domain names constitute typosquatting. Typosquatting, or intentionally introducing typographical errors into a domain name to increase internet traffic may demonstrate relevant bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, several of the disputed domain names, namely <bankofaemrcia.com> and <bankofamericea.com>, may qualify as typosquatting. As the Panel agrees, it finds bad faith with respect to the registration and use of those domain names under Policy ¶ 4(a)(iii).
Fifthly, Complainant contends that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the BANK OF AMERICA mark. Per Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to demonstrate bad faith, and may be demonstrated by the notoriety of Complainant’s mark and the use Respondent makes of the disputed domain names. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Complainant contends that Respondent must have known of the BANK OF AMERICA mark based on registering eight separate infringing domain names, some of which are typosquatted version of the mark, and based on Respondent using the domain names to link to Complainant’s competitors. As the Panel agrees, it finds bad faith within the meaning of Policy ¶ 4(a)(i).
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 <bankofamericansignin.com>, <bankofamericaatm.com>, <bankofaemrcia.com>, <bankofamericea.com>, <bankofamericacreditscore.com>, <bankofamericafullsite.com>, <bankofamericaunemploymentcard.com>, and <bankofamericafsa.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: April 11, 2022
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