Bank of America Corporation v. Clearer Technology / Gabriel Joseph
Claim Number: FA2207002002927
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Clearer Technology / Gabriel Joseph (“Respondent”), represented by Envisage Law, North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bankofamericaemployees.com> and <boaemployees.com> (collectively “Domain Names”), registered with Name.com, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 4, 2022, the Forum received payment on July 4, 2022.
On July 5, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <bankofamericaemployees.com> and <boaemployees.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 7, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@bankofamericaemployees.com, postmaster@boaemployees.com. Also on July 7, 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.
A timely Response was received and determined to be complete on July 29, 2022.
On August 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
On August 2, 2022 the Complainant filed an Additional Submission with the Forum. This Submission was provided to the Panel when appointed and the Panel exercised its discretion to allow consideration of the Submission. Amongst other things the Additional Submission sought that the domain name <merrillynchemployees.com> be added to the proceedings. On August 8, 2021 the Panel issued an Order indicating that it would consider Complainant’s Additional Submission and provide Respondent until August 15, 2021 to file a Response to Complainant’s Additional Submission, but did not consider it appropriate for the domain name <merrillynchemployees.com> be added to the proceedings after panel appointment. The Panel noted that Complainant had an option of filing an additional complaint with the Forum in respect of that domain name. On August 15, 2021, Respondent filed an Additional Response which has been considered by the Panel.
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.
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 entities which control the domain names at issue are effectively controlled by the same person and/or entity, 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.”
Based on the Response, which was filed by a single entity, indicating that the Domain Names were commonly controlled, the Panel is satisfied that the Domain Names are under common control
A. Complaint and Complainant’s Additional Submissions
Complainant, Bank of America Corporation, provides banking and financial services. Complainant has rights in the BANK OF AMERICA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 853,860, registered July 30, 1968. Complainant has rights in the BOFA mark through its registration of the mark with the USPTO (e.g., Reg. 4,210,429, registered September 18, 2012). Respondent’s Domain Names are confusingly similar to Complainant’s marks for the following reasons:
· The <bankofamericaemployees.com> domain name incorporates the BANK OF AMERICA mark in its entirety, merely adding the word “employees” and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
· The <boaemployees.com> domain name incorporates the BOFA mark save the letter “f” and adds the gTLD “.com” to form the disputed domain name.
Respondent has no legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and Complainant has not authorized or licensed Respondent any rights in the Complainant’s marks. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the <bankofamericaemployees.com> domain name resolves to an inactive webpage. The <boaemployees.com> domain name has resolved to a page displaying pay-per-click third-party links to competing services.
Respondent registered and uses the Domain Names in bad faith. Respondent has a pattern of conduct of registering multiple domain names for commercial and bad faith purposes. Respondent registered the Domain Names in order to divert customers for commercial gain and as a pretext to support a false claim of non-commercial use.
B. Response and Respondent’s Additional Submissions
Respondent contends that the Domain Names are not confusingly similar to Complainant’s marks. Respondent argues that Respondent intended to develop the Domain Names to include disclaimers that the resolving websites are not affiliated with Complainant. Respondent also contends that the Domain Names were intended to be used to provide criticism of Complainant and information to Complainant’s employees, and thus would not be easily mistaken as affiliated with Complainant.
Respondent argues that Respondent has rights and legitimate interests in the Domain Names. Respondent contends that Respondent does not derive commercial gain from the Domain Names and intended to make a legitimate noncommercial or fair use by using the resolving websites to provide criticism of Complainant.
Respondent argues that Respondent did not register or use the Domain Names in bad faith. Respondent contends that the cases cited by Complainant as evidence of Respondent’s involvement in previous UDRP proceedings bear no relation to the current case. Respondent further contends Respondent does not use the Domain Names to attract internet users for commercial gain.
Respondent, in its additional submission, submits that the use of the <boaemployees.com> domain name to resolve to a page displaying pay-per-click third-party links was caused by the Domain Name resolving to the default landing page of the Registrar and Respondent did not profit from that use. Respondent indicates that it has registered a selection of domain names, in similar format (trademark + “employees.com”) to the Domain Names that it uses to inform employees of those companies of their employer’s social activism.
Respondent submits that a related decision involving the domain name <boehringeremployees.com> should not bind the panel as it did not involve a United States corporation, and in the present case US law should apply. Respondent submits that it is not seeking to impersonate the Complainant and operates legitimate, non-commercial criticism sites at the Domain Names.
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 and 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.
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 July 30, 1968; BOFA – Reg. 4,210,429, registered September 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 add the descriptive term “employees” and the “.com” gTLD to either the wholly incorporated mark or (in the case of BOFA) a minor misspelling of the mark created by removing the letter “f”). 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 Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity).; 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 and that Respondent has not satisfied the burden of showing that it does have rights or legitimate interests.
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 “Clearer Technology / Gabriel Joseph” 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 <boaemployees.com> domain name has resolved to a website 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.”). Complainant submits that Respondent’s purpose in registering both the Domain Names is to resolve to pay-per-click websites for which the Respondent would receive commercial gain.
Respondent submits that the intention behind the registration of each of the Domain Names was to use the Domain Names for non-commercial criticism of the Complainant’s policies. The Complainant’s Additional Submission states that Respondent, subsequent to the commencement of the proceedings, registered a domain name located at <merrilllynchemployees.com> which does contain criticism of Complainant and its policies but submits that this website (and the evidence in the Response of the intention of the Respondent to operate criticism sites at the Domain Names) does not amount to a genuine non-commercial criticism website but rather a fake website to create a pretext of non-commercial criticism for the purposes of this proceeding and Respondent’s actual intention is to use the Domain Names for commercial gain, as it has done in other websites subject to proceedings under the Policy. Respondent, in its additional submissions, restates its claim as to intention and provides evidence of further domain names registered and presently used to criticize the registered owners of the corresponding trademark.
It is not necessary to reach a conclusion as to whether the Respondent’s purported use or the Domain Name is genuine or a pretext created for the present proceedings. Even if I were to accept Respondent’s submissions as to the intended use of the Domain Names, I would find that such use does not amount to legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). As each of the Domain Names contains the Complainant’s marks (or an abbreviation of one of Complainant’s marks) in its entirety and the descriptive word “employees”, Respondent’s intended use of the Domain Names would be impersonating the Complainant. While the intended content of the websites to be located at the Domain Names may enjoy protection, this does not extend to the creation of rights or a legitimate interest with respect to the Domain Names. There is clear authority under the Policy, which this Panel follows, that, regardless of the location of the respective parties, Respondent does not have the right to impersonate Complainant by wholly incorporating Complainant’s trademark (or an abbreviation in the case of the <boaemployees.com> domain name) in a disputed domain name without the inclusion other indicia (such as a derogatory term) to make it clear that the domain name is unconnected to Complainant. Therefore, the Panel finds that Respondent does not use or show demonstrable preparations to use the Domain Names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”); see also Baker & Daniels v. DefaultData.com, FA 104579 (Forum Mar. 27, 2002) (finding that because the respondent’s <bakeranddaniels.com> domain name merely incorporates the complainant’s trademark, without more, it is not protected by the First Amendment); see also Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”); see also Robo Enters., Inc. v. Tobiason, FA 95857 (Forum Dec. 24, 2000) (rejecting the respondent’s asserted rights or legitimate interest in the domain name <roboenterprises-investors.com>, noting that while the content of the respondent’s website may enjoy First Amendment and fair use protection, those protections do not create rights or a legitimate interest with respect to a domain name which is confusingly similar to another’s trademark); see also Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected.).
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, June 10, 2022, Respondent had actual knowledge of Complainant’s marks as Respondent’s submits that it intended to use the Domain Names for websites that criticise Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Taking the Respondent’s submissions at their highest, the Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s marks for by attempting to pass off as Complainant in order to disrupt Complainant’s business. The use a domain name to trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site can also be bad faith under Policy ¶ 4(a)(iii), see Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Forum Aug. 20, 2003) “[the respondent’s] registration and use of a domain name nearly identical to [the complainant’s] mark to criticize [the complainant’s] business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”; see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).”
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamericaemployees.com> and <boaemployees.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 16, 2022
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