Bank of America Corporation v. ThadZeus
Enterprises
Claim Number: FA0204000109371
PARTIES
Complainant
is Bank of America Corporation,
Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston
& Bird, LLP. Respondent is ThadZeus Enterprises, Columbus, OH
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bankofaerica.com>,
registered with CORE.
PANEL
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 9, 2002; the Forum received a hard copy of the
Complaint on April 15, 2002.
On
April 16, 2002, CORE confirmed by e-mail to the Forum that the domain name <bankofaerica.com> is registered
with CORE and that Respondent is the current registrant of the name. CORE has
verified that Respondent is bound by the CORE 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
April 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 6, 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 postmaster@bankofaerica.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
May 16, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Carmody, Esq., 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
1. Respondent’s domain name <bankofaerica.com>
is confusingly similar to Complainant’s BANK OF AMERICA mark.
2. By diverting Internet users for
commercial purposes, and to a third-party website <chon.org>, Respondent
has no rights or legitimate interests in <bankofaerica.com>.
3. Respondent has intentionally attracted
Internet users for personal gain by using a common misspelling of Complainant’s
trademark. This represents a blatant attempt to divert Internet traffic
intended for Complainant to Respondent’s website. Complainant also 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.
B.
Respondent did not submit a Response in this proceeding.
FINDINGS
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 September 4, 2000 and has used it to offer Internet users an
opportunity to enter into a lottery. The domain name is also linked to a
website <chon.org> where an organic club is promoted.
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 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.
Complainant has established its rights in
the BANK OF AMERICA mark through federal registration and subsequent continuous
use. (U.S. Service Mark Reg. No. 853,860). The disputed domain name <bankofaerica.com>
is confusingly similar to Complainant’s mark.
The only difference between the disputed
domain name and the mark is a deleted “m,” and thus, the domain name is
confusingly similar to the mark. See Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding
that a domain name which differs by only one letter from a trademark has a
greater tendency to be confusingly similar to the trademark where the trademark
is highly distinctive). In fact, Respondent’s domain name is identical to
Complainant’s mark except that it includes a slight typographical error of
deletion. See Dow Jones & Co.,
Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such generic typos do not change the
Respondent’s infringement on a core trademark held by Complainant); 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
By
infringing upon Complainant’s registered mark in order to enlist Internet users
for a lottery, Respondent is not making a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). 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
Complainant's site to a competing website); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that,
because the Respondent's sole purpose in selecting the domain names was to
cause confusion with the Complainant's website and marks, it's use of the names
was not in connection with the offering of goods or services or any other fair
use).
Additionally,
no evidence here suggests that Respondent is a bank, investment firm, or other
financial institution, and Respondent has no preexisting rights in BANK OF
AMERICA or BANK OF AERICA as a trademark, service mark or trade name. No
evidence suggests that Respondent is commonly known as “bankofaerica” or <bankofaerica.com>
pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel only as
ThadZeus Enterprises. See Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark); see also Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution
Sept. 23, 2000) (finding no rights or legitimate interests where no such right
or interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
The
Panel finds that Respondent has no rights or legitimate interests in respect of
the disputed domain name, and thus, that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the disputed domain
name <bankofaerica.com>, which is confusingly similar to
Complainant’s mark, in order to solicit Internet users who were searching for
the Complainant’s site <bankofamerica.com>. Given the prominence of
Complainant’s mark on the Internet, Respondent was aware or should have been
aware of Complainant’s rights in the mark. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) (finding that, in light of the notoriety of Complainants' famous marks,
Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks
at the time she registered the disputed domain name and such knowledge
constituted bad faith); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
The evidence also indicates that
Respondent did not register or begin using the subject domain name until
September 4, 2000 – long after Complainant’s BANK OF AMERICA mark had acquired
its fame. See 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”). Without any preexisting
rights in BANK OF AMERICA or BANK OF AERICA as a trademark, service mark, or trade
name, it may be assumed that Respondent adopted, registered and is using the
subject domain name because of the fame and goodwill associated with
Complainant’s BANK OF AMERICA mark. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding
bad faith when (1) the domain name contains the Complainant’s mark, (2) the
mark is a coined word, well-known and in use prior to Respondent’s registration
of the domain name, and (3) Respondent fails to allege any good faith basis for
use of the domain name); see also Paws,
Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the
uniqueness and the extreme international popularity of the [ODIE] mark, the
Respondent knew or should have known that registering the domain name in
question would infringe upon the Complainant's goodwill").
Respondent’s intentional use of a domain
name that infringes upon Complainant’s rights in order to attract internet
users to its own website for commercial gain demonstrates bad faith pursuant to
Policy ¶ 4 (b)(iv). See AltaVista
v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy
¶ 4(b)(iv) where the Respondent linked the domain name to a website that
offered a number of web services).
When the Respondent registered a domain
name nearly identical to the Complainant’s mark, differing only in a slight
typographical error, it exhibited a practice of “typosquatting” that has been
recognized as a bad faith use of a domain name under the Policy.
See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000)
(awarding <alavista.com>, among other misspellings of altavista.com, to
Complainant); Dow Jones & Co. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names
<dowjones.com>, <sj.com>, <barrons.com> and
<barronsmag.com> to Complainants).
Accordingly, 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 be hereby GRANTED.
Accordingly, it is Ordered that the domain name <bankofaerica.com> be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 22, 2002
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