Bank of America Corporation v. BanofAmerica
Claim Number: FA0203000105885
Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Luke Anderson, of McGuireWoods LLP. Respondent is BanofAmerica, Egg Harbor, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <banofamerica.com>, registered with BulkRegister.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 14, 2002; the Forum received a hard copy of the Complaint on March 14, 2002.
On March 15, 2002, BulkRegister.com confirmed by e-mail to the Forum that the domain name <banofamerica.com> is registered with BulkRegister.com and that Respondent is the current registrant of the name. BulkRegister.com has verified that Respondent is bound by the BulkRegister.com 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 March 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 4, 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 April 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 Respondent to Complainant.
Respondent’s domain name <banofamerica.com> is confusingly similar to Complainant’s BANK OF AMERICA mark.
By diverting Internet users to a third-party website <superfit.com>, Respondent has no rights or legitimate interests in <banofamerica.com>.
Respondent has intentionally attracted Internet users for personal gain by using a common misspelling of Complainant’s trademark. This is a blatant attempt to divert Internet traffic intended for Complainant to Respondent’s website. Upon information and belief, Complainant contends that Respondent has engaged in registering and using misspellings of Complainant’s trademark to divert users to third party websites. Thus, Respondent has registered and used the disputed domain name in bad faith
No Response was submitted.
Complainant registered the BANK OF AMERICA mark with the United States Patent and Trademark Office on July 30, 1968, Registration No. 853,869. Complainant has used the mark in connection with commercial, savings, loan, trust, and credit financing banking services. Complainant has used the BANK OF AMERICA mark for the last seventy-three years and has established the mark in the public’s mind through advertising in the print, television, and radio media and on the Internet.
Respondent registered the disputed domain name on May 8, 2000. The disputed domain name is linked to a website <superfit.com> which posts classified ads.
Only a few months ago, Complainant filed a Complaint against the same Respondent in which the Panel transferred <bankofameric.com> to Complainant. See Bank of Am. Corp. v. BankofAmeric, FA 102617 (Nat. Arb. Forum Jan. 14, 2002) (transferring <bankofameric.com> from Respondent to Complainant).
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 in the BANK OF AMERICA mark through federal registration and subsequent continuous use. The disputed domain name is confusingly similar to Complainant’s mark. The only difference between the disputed domain name and the mark is a deleted “k.” Such a small difference does not distinguish the disputed domain name <banofamerica.com> and Complainant’s BANK OF AMERICA mark. See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Bank of Am. Corp. v. BankofAmeric, FA 102617 (Nat. Arb. Forum Jan. 14, 2002) (finding <bankofameric.com> confusingly similar to Complainant’s BANK OF AMERICA 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
Respondent has not filed a Response in this matter. Therefore, the Panel can conclude that Respondent has no rights or legitimate interests in <banofamerica.com>. 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). Thus, the Panel may assume that all of the allegations made in the Complaint are true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent has used the misspelling of Complainant’s famous mark to divert users to website that offers classified ads. This is not a demonstration of a use in connection with a bona fide use pursuant to Policy ¶ 4(c)(i). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Given the fame attained by Complainant’s BANK OF AMERICA mark, it is difficult for anyone, other than Complainant, to be commonly known as <banofamerica.com>. Therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).
Since Respondent uses a misspelling of Complainant’s famous mark to divert users to a commercial website, the Panel concludes that Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was a misspelling of a famous mark); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Because Complainant’s mark is famous and because there is evidence that Respondent has registered similar misspellings of Complainant’s famous mark, and considering that Respondent is not known as <banofamerica.com>, Respondent was aware of Complainant’s mark before registering the disputed domain name. Therefore, Respondent registered the disputed domain name in bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 8, 2000) (finding bad faith where (1) the Respondent knew or should have known of the Complainant’s SONY marks and (2) Respondent registered multiple domain names which infringed upon the Complainant’s mark).
By using a confusingly similar domain name to divert users to a commercial website, Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion as to the source of the website. Therefore, Respondent has used the disputed domain name in bad faith as pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Furthermore, Respondent’s practice of “typosquatting” has been recognized as a bad faith use of a domain name under the Policy. 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 <banofamerica.com> be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 12, 2002
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