DECISION

Bank of America Corporation v. Stonybrook Investments Ltd

Claim Number: FA0111000102511

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Luke Anderson, of McGuireWoods LLP. Respondent is Stonybrook Investments, Ltd., Belize City (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bankofamreica.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 21, 2001; the Forum received a hard copy of the Complaint on November 26, 2001.

On November 26, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <bankofamreica.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On November 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 19, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@bankofamreica.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.” 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant asserts the following:

The domain name registered by Respondent, <bankofamreica.com>, is confusingly similar to Complainant’s BANK OF AMERICA mark. Respondent has no rights or legitimate interests in the domain name. Respondent’s regsitration and use of the domain name is in bad faith.

B. Respondent did not file a response in this proceeding.

FINDINGS

Complainant registered the BANK OF AMERICA service mark on the Principal Register for the United States Office of Patent and Trademarks on July 30, 1968 (Registration No. 853,860), and subsequently renewed its registration in 1988. Complainant has used the service mark in connection with commercial, savings, loan, trust, and credit financing banking services.

For the last seventy-three years Complainant has established significant goodwill through advertisement of its banking services throughout the United States via the Internet, television, print, radio, and its corporate sponsorship of events.

Respondent registered the <bankofamreica.com> domain name on November 17, 2000, well after Complainant registered its service mark. Complainant attempted to contact Respondent by letter to request transfer of the domain name on August 16, 2001, but the communication was returned as undeliverable. According to postal authorities, Respondent had moved without providing forwarding information.

Respondent’s domain name provides a link to another website registered by Respondent that provides numerous credit card advertisements. Respondent also has a history of registering famous domain names like <ragingbull.com>, <wwwamerica.west.com>, and <wwwwhitepages.com>.

DISCUSSION

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.”

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(e), 14(a) and 15(a) of the Rules.

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;

(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.

Identical to and/or Confusingly Similar

Complainant has established that it has rights in the BANK OF AMERICA mark. Respondent’s <bankofamreica.com> domain name, a common misspelling of Complainant’s mark, is confusingly similar to Complainant’s BANK OF AMERICA registered service mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark “Bank of America” because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).

Moreover, Respondent’s domain name is confusingly similar to Complainant’s mark because it creates a likelihood of confusion for the Internet user as to Complainant’s association with Respondent’s website. The Internet user’s confusion is increased by the fact that Respondent and Complainant provide similar services. Respondent’s website advertises credit card services, while Complainant’s website also provides credit card offerings indistinguishable from Respondent. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant has established its legal rights to the BANK OF AMERICA mark. Respondent has made no offer of proof and no Response in this proceeding. The Panel is permitted to make all inferences in favor of Complainant when Respondent fails to respond to the Complaint. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent’s failure to provide a Response permits the inference that Respondent has no rights or legitimate interest in the domain name in issue that is based on the mark of another. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent’s use of a domain name that is identical to Complainant’s famous mark except for a common misspelling further may be viewed as evidence of Respondent’s attempt to trade on the good will of Complainant’s famous service mark. This cannot constitute a bona fide offering of goods, and therefore, indicates Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(i). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (finding that the use of a domain name that intentionally trades on the fame of another can not constitute a bona fide offering of goods).

It can be presumed that Respondent is not commonly known by the domain name that is confusingly similar to a famous mark. As a result, Respondent has not demonstrated rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

Respondent’s use of the confusingly similar domain name to attract Complainant’s customers a website full of advertisements, is not a legitimate noncommercial or fair use. See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant urges that Respondent acted in bad faith in registering a domain name that is confusingly similar to a mark in which Complainant has legal rights. The facts permit the inference that Respondent has demonstrated bad faith use and registration by registering and using a domain name that is likely to be falsely associated by Internet users with Complainant’s business. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Furthermore, Respondent’s use of the confusingly similar domain name to attract Internet users for commercial gain to its website full of advertisements is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Finally, Respondent’s pattern of registering domain names that are confusingly similar to famous trademarks is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied

DECISION

Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <bankofamreica.com> be hereby transferred from Respondent to Complainant.