Bank of America Corporation v. ANKOFAMERICA.COM
Claim Number: FA0203000105891
Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP. Respondent is ANKOFAMERICA.COM, Belize City, BELIZE (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ankofamerica.com>, registered with BulkRegister.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 15, 2002; the Forum received a hard copy of the Complaint on March 19, 2002.
On March 18, 2002, BulkRegister.com confirmed by e-mail to the Forum that the domain name <ankofamerica.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 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 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 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.
1. The domain name <ankofamerica.com> is identical to Complainant’s BANK OF AMERICA mark except that it includes the typographical omission of the letter “b” of Complainant’s famous mark.
2. Because of the confusing similarity between the disputed domain name and Complainant’s famous mark, Respondent does not have a legitimate interest in the disputed domain name.
3. Because of the fame associated with Complainant’s mark, Respondent either knew or should have known about the mark, and Respondent’s use is diminishing the goodwill of Complainant’s famous mark. Therefore, Complainant has registered and used the disputed domain name in bad faith.
No Response was submitted.
Complainant is widely known as a leader in the banking industry and is the largest consumer bank in the United States. Complainant registered the BANK OF AMERICA mark with the United States Patent and Trademark Office on July 30, 1968, Registration No. 853,860. Complainant also uses the domain name <bankofamerica.com> to promote its wide variety of financial services.
Respondent registered <ankofamerica.com> on March 26, 2001. The disputed domain name is being used as a portal to other websites on which a variety of products and services are being offered. These products and services include financial services and sexually explicit products and services. Respondent has not answered Complainant’s cease and desist request.
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 federal registration and subsequent continuous use. The disputed domain name <ankofamerica.com> is confusingly similar to Complainant’s domain name. The disputed domain name excludes the letter “b” of the famous mark and adds “.com,”, but such minor changes do not create a distinct mark. 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 the Complainant’s STATE FARM mark); see also 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).
Furthermore, even though the disputed domain name does not incorporate the spaces of BANK OF AMERICA, the disputed domain name does not distinguish itself from the famous mark due to the fact that spaces are not permitted in a domain name. 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 Tech. Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK).
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 <ankofamerica.com>. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from Respondent’s failure to reply to the Complaint). Therefore, the Panel may assume that all of the allegations made in the Complaint are true. 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”).
By using a confusingly similar domain name to divert users to a commercial website that offers, among other things, pornographic goods and services, Respondent has not engaged in a bona fide offering of goods and services connected with the website 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).
Complainant’s BANK OF AMERICA mark is so widely known that no one, other than Complainant, can be considered commonly known as <ankofamerica.com>. Therefore, Respondent can not 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>).
Because the domain name is a spelling variation of Complainant’s famous BANK OF AMERICA mark and since Respondent has linked the disputed domain name to a commercial website, Respondent has failed to satisfy 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
Given the fame of Complainant’s mark and given the peculiar similarity between the disputed domain name and the mark, the Panel can presume Respondent knew of Complainant’s famous mark when it registered the disputed domain name and such registration is considered to be in bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding 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”); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding that the Respondent’s registration of names of famous people, with slight typographical errors, was evidence of bad faith); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
Since Respondent has used 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).
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 <ankofamerica.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: April 23, 2002
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