Bank of America Corporation v. Seocho
Claim Number: FA0112000103021
Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP. Respondent is Seocho, Seoul, Korea (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofamercia.com>, registered with Bulkregister.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 14, 2001; the Forum received a hard copy of the Complaint on December 18, 2001.
On January 4, 2002, Bulkregister confirmed by e-mail to the Forum that the domain name <bankofamercia.com> is registered with Bulkregister and that Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister 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 January 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 2002 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 email@example.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 February 6, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
1. The domain name <bankofamercia.com> is not just confusingly similar to BANK OF AMERICA it is virtually identical except with the slight misspelling of the word “america.”
2. Respondent has a history of registering misspellings of famous domain names and cannot prove that its use of <bankofamercia.com> is in connection with a bona fide offering or service or is a legitimate use. Further, Respondent is not a bank, investment firm, or other financial institution and cannot show that it is commonly known as <bankofamercia.com>. Thus, Respondent does not have a legitimate interest in the domain name.
3. Since Respondent has a history of registering misspellings of famous domain names and Respondent knew or should have known BANK OF AMERICA when it registered <bankofamercia.com>, Respondent has registered and used the domain name in dispute to prevent Complainant from reflecting its mark and Respondent has engaged in a pattern of such conduct. Furthermore, because Respondent uses a domain name that is nearly identical to Complainant’s mark that directs users to a competing site and a gambling site, Respondent is in bad faith as evidence by its use and registration of <bankofamercia.com>.
No Response was received.
Complainant, Bank of America Corporation, is the largest consumer bank in the United States and one of the world’s best-known financial institutions. Complainant owns several trademark registrations throughout the world, including U.S. Service Mark Registration Number 853,860, issued July 30, 1968. Complainant is also the owner of South Korean registration numbers 216, 70,100, and 1,423 issued May 10, 1968, July 8, 1970 and July 5, 2000, respectively, each covering BANK OF AMERICA in either Korean characters or in English. Complainant has exclusively used its registered mark, BANK OF AMERICA, to identify its banking and financial services.
In addition, Complainant offers a wide variety of financial services via its website, <bankofamerica.com>.
Finally, the disputed domain name was previously awarded to Complainant in a prior UDRP proceeding. See Bank of America v. Cupcake Patrol, FA 96582 (Nat. Arb. Forum March 19, 2001). However, the original registrar for the accused domain name, CORE, did not make the transfer to Complainant and <bankofamercia.com> registration lapsed thereafter.
Respondent registered the <bankofamercia.com> domain name on May 17, 2001. Respondent is using the disputed domain name to redirect users to two different websites: <lowermybills.com>, which offers financial services and <super-casino.com/bonus/>, which offers gambling services.
Respondent has a history of “typosquatting” examples include: <wwwpfizer.com>, <expeadia.com>, and <googlr.com>.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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 and/or Confusingly Similar
Complainant has established its rights to BANK OF AMERICA through its extensive use and registration in the United States and throughout the world including Korea, the jurisdiction where Respondent resides.
Further, <bankofamercia.com> differs from Complainant’s famous mark only by switching the letters “ic.” This small change, which results in a misspelling of Complainant’s famous mark, does not diminish the confusingly similarity between the mark and <bankofamercia.com>. See Victoria’s Secret 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); see also Expedia, Inc. v. Seocho, D2001-1088 (WIPO Nov. 4, 2001) (finding that the domain name <expeadia.com> is confusingly similar to Complainant’s EXPEDIA mark); 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has established its rights in BANK OF AMERICA. Respondent has failed to file a Response in the matter. It is well established that when Respondent fails to file a response, the Panel will presume that Respondent has no rights or legitimate interests in the disputed domain name. 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 is using a domain name that is confusingly similar to Complainant’s famous trademark to divert users to a website that offers similar services, therefore Respondent’s domain name is not connected with a bona fide offering of services. Thus, Respondent fails to satisfy Policy ¶ 4(c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark. Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).
According to the evidence provided, Respondent has never been authorized to use <bankofamercia.com> nor has Respondent shown that it has been or is now commonly known by the domain name and therefore, Respondent has not satisfied Policy ¶ 4(c)(ii). See American Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interest in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Finally, Respondent is using a domain name that is confusingly similar to Complainant’s famous trademark to divert users to a website that offers similar services. Without any evidence presented to the contrary, the Panel can presume that Respondent has diverted business from Complainant. See Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of the Complainant’s mark in connection with the Respondent’s website is misleading and Respondent is intentionally diverting business from the Complainant). Therefore, Respondent’s use of a domain name which misspells Complainant’s famous trademark and diverts users to a website that offers a similar service is not a legitimate noncommercial or fair use of <bankofamercia.com>. See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has registered and used <bankofamercia.com> to divert users to its own website that provides services that are similar to Complainant. Respondent has a history of similar actions. See Google, Inc. v. Goog LR f/k/a Seocho, FA 98462 (Nat. Arb. Forum Sept. 28, 2001) (transferring <googlr.com> to Complainant who holds GOOGLE); see also Pfizer, Inc. v. Seocho and Vladimir Snezko, D2001-1199 (WIPO Nov. 28, 2001) (transferring <wwwpfizer.com> to Complainant who holds PFIZER); see also Expedia, Inc. v. Seocho, D2001-1088 (WIPO Nov. 4, 2001) (transferring <expeadia.com> to Complainant who holds EXPEDIA). Therefore, Respondent has violated Policy ¶ 4(b)(ii). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that when Respondent has a history of “typosquatting” and registers a domain name that misspells Complainant’s trademark, Respondent is in bad faith as outlined in Policy ¶ 4(b)(ii)).
By misspeling Complainant’s famous trademark, Respondent’s registration and use of <bankofamercia.com> that diverts users to a website that offers services that are similar to Complainant’s services is evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s famous trademark. See Google, Inc. v. Goog LR f/k/a Seocho, FA 98462 (Nat. Arb. Forum Sept. 28, 2001) (finding that since Respondent linked <googlr.com> to a competing website of Complainant, Respondent’s registration and use is a finding of bad faith, pursuant to the Policy ¶ 4(b)(iv)).
Finally, Respondent’s registration and use of <bankofamercia.com>, which is a misspelling of Complainant’s mark, indicates the common practice of "typosquatting." Such evidence further supports a finding of bad faith. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <bankofamercia.com> be transferred from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 15, 2002
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