Bank of America Corporation v. Netchem, Inc.
Claim Number: FA0203000105886
Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Luke Anderson, of McGuireWoods, LLP. Respondent is Netchem, Inc., Milltown, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bnkofamerica.com>, registered with BulkRegister.com.
On April 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
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 <bnkofamerica.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.
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.
1. The disputed domain name <bnkofamerica.com> is confusingly similar to Complainant’s BANK OF AMERICA mark.. The disputed domain name is a common misspelling of Complainant’s mark.
2. Respondent is not using <bnkofamerica.com> in connection with a bona fide offering of goods or services and therefore, Respondent has no rights or legitimate interests in <bnkofamerica.com>.
3. Respondent’s use of <bnkofamerica.com>, a spelling variation of Complainant’s famous mark, constitutes bad faith. Second, by using a confusingly similar domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Third, Respondent’s registration of multiple domain names, all of which are common misspellings of Complainant’s mark, demonstrates Respondent’s bad faith. Finally, Complainant contends that Respondent is connected with another entity that has registered similar common misspellings of Complainant’s mark. Complainant alleges that Respondent’s relationship with this entity and their common pattern of registering misspellings of Complainant’s marks shows a sophisticated, systematic practice coordinated among multiple parties for the sole purpose of benefiting from the intentional diversion of Internet users
No Response was received.
Complainant is widely known as a leader in the banking industry. Complainant registered the BANK OF AMERICA mark with the United States Patent and Trademark Office on July 30, 1968, Registration No. 853,869, and renewed the original trademark registration on July 30, 1988. 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 <bnkofamerica.com> on May 23, 2000. The disputed domain name is linked to a website <superfit.com> which posts classified ads.
Complainant had filed a similar Complaint regarding Respondent’s use of <bankfamerica.com> and <bankofameria.com> a few months ago. See Bank of Am. Corp. v. Netchem, Inc., FA 102615 (Nat. Arb. Forum Jan. 7, 2002) (transferring the disputed domain names from Respondent to Complainant). However, Complainant subsequently discovered that Respondent was also using <bnkofamerica.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 the BANK OF AMERICA mark through registration and long time use. The disputed domain name <bnkofamerica.com> is confusingly similar to Complainant’s BANK OF AMERICA mark. The only difference between the disputed domain name and mark is that the domain name does not incorporate the “a” of “bank.” Such a minor change does not distinguish the domain name from the mark and thus, they are confusingly similar.
See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM 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).
Furthermore, the fact that the disputed domain name does not incorporate spaces like the famous BANK OF AMERICA mark does not defeat the confusing similarity between the disputed domain name and mark. See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent did not file a Response in this matter and therefore, the Panel can conclude that Respondent has no rights or legitimate interests in <bnkofamerica.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). Therefore, the Panel will may assume that all of the allegations made in the Complaint are true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant’s mark has gained a level of fame that makes it difficult for anyone, other than Complainant, to be commonly known as <bnkofamerica.com>. Therefore, Respondent is not considered to be commonly known as <bnkofamerica.com> as pursuant to Policy ¶ 4(c)(ii). See Victoria’s Secret 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 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>).
Respondent’s domain name is a common misspelling of Complainant’s mark. Respondent has connected the disputed domain name to a commercial website. This hardly demonstrates a legitimate, noncommercial or fair use as pursuant to Policy ¶ 4(c)(iii). See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of 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
Respondent has registered the disputed domain name, a misspelling of Complainant’s famous BANK OF AMERICA mark in an attempt to trade on the notoriety and fame of the mark. Such use evidences bad faith under Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).
Complainant has demonstrated that Respondent registered similar misspellings of Complainant’s mark in the past. See Bank of Am. Corp. v. Netchem, Inc., FA 102615 (Nat. Arb. Forum Jan. 7, 2002) (transferring <bankfamerica.com> and <bankofameria.com> from Respondent to Complainant). In finding bad faith under Policy ¶ 4(a)(iii), the Panel is not limited to the examples set out in Policy ¶ 4(b), but rather, it may look to the totality of circumstances surrounding the registration and use of the domain names. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in ¶ 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that, in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Respondent’s pattern of registering and using domain names that reflect misspellings of Complainant’s mark, a practice known as “typosquatting,” demonstrates bad faith within the meaning of 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 <bnkofamerica.com> be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: April 11, 2002
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