Bank of America Corporation v. Marius
Wunner
Claim Number: FA0204000110845
Complainant
is Bank of America Corporation,
Charlotte, NC, USA (“Complainant”), of Alston & Bird LLP. Respondent is Marius Wunner, Regensburg, GERMANY (“Respondent”).
The
domain name at issue is <bankofamerica.biz>,
registered with CORE.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge, has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National Arbitration
Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 25, 2002; the Forum
received a hard copy of the Complaint on April 26, 2002.
On
April 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 20,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
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 June 25, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Sandra Franklin as
the single 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 STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<bankofamerica.biz> domain name is identical to Complainant's BANK
OF AMERICA mark.
Respondent
has no rights or legitimate interests in the <bankofamerica.biz>
domain name.
Respondent
registered the <bankofamerica.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant is the largest consumer bank
in the United States. Complainant has
used the trade name BANK OF AMERICA to identify its banking and financial
services for several years. Complainant
holds a registered service mark in the United States for the BANK OF AMERICA
mark (Reg. No. 853,860).
Respondent registered the disputed domain
name on March 27, 2002. Respondent is
commonly known as Marius Wunner.
Complainant investigation has found no evidence that Respondent is doing
business under the name BANK OF AMERICA or <bankofamerica.biz>.
Paragraph 15(a) of the STOP 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 STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical 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 or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established that it has rights in the BANK OF AMERICA mark through
continuous use and registration with the United States Patent and Trademark
Office. The <bankofamerica.biz>
domain name is identical to Complainant’s BANK OF AMERICA mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. 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”).
There is no evidence that Respondent
holds a trademark or service mark BANK OF AMERICA. Therefore, Respondent has no rights or legitimate interests in
the disputed domain name pursuant to STOP Policy ¶ 4(c)(i). See Nat’l Acad. Of Recording Arts &
Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding
that, because Respondent did not come forward with a Response, the Panel could
infer that it had no trademark or service marks identical to <grammy.biz>
and therefore had no rights or legitimate interests in the domain name); see
also Canadian Imperial Bank of
Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336
(eResolution Sept. 23, 2000) (finding no rights or legitimate interests under
the UDRP where no such right or interest is immediately apparent to the Panel
and Respondent has not come forward to suggest any right or interest it may
possess).
Based on the fame of Complainant’s mark,
any use of the <bankofamerica.biz> domain name will cause a
likelihood of confusion as to the source, sponsorship, and affiliation of the
domain. It can be inferred that
Respondent will attempt to attract Complainant’s customers to Respondent’s
website for commercial gain. This type
of use is not considered to be a bona fide offering of goods or services
pursuant to STOP Policy ¶ 4(c)(ii). See
William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum
March 21, 2002) (finding the
Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by
attracting Internet users confused as to the likely affiliation between
Complainant and Respondent’s website” indicated the respondent had no rights or
legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit
Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb.
Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's
domain is not considered to be a bona fide offering of goods or services
pursuant to STOP Policy ¶ 4(c)(ii)”).
Respondent is known to the Panel as
Marius Wunner, and has not come forward to establish otherwise. Without any evidence to show that Respondent
is commonly known as BANK OF AMERICA or <bankofamerica.biz>, the
Panel cannot find that Respondent has rights or legitimate interests in the
disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June
19, 2000) (finding that Respondent has failed to demonstrate any rights or
legitimate interests in the <twilight-zone.net> domain name since
Complainant had been using the TWILIGHT ZONE mark since 1959); see also Nike,
Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights
or legitimate interests where one “would be hard pressed to find a person who
may show a right or legitimate interest” in a domain name containing
Complainant's distinct and famous NIKE trademark).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Because Complainant’s mark is famous it
can be inferred that Respondent had knowledge of Complainant’s rights in the
BANK OF AMERICA mark when it registered the <bankofamerica.biz>
domain name. Respondent’s registration
of the disputed domain name, despite this knowledge is evidence of bad faith
registration. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or
constructive knowledge of commonly known mark at the time of
registration). Furthermore, due to the
nature of the STOP process, Respondent received notice that Complainant filed
an IP Claim before it registered the disputed domain name. Therefore Respondent had actual knowledge
that Complainant held a service mark for the BANK OF AMERICA mark when it
registered <bankofamerica.biz> ; thus, it registered the disputed
domain name in bad faith. See Gene
Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that
the unique nature of the STOP Policy and the notice given to Respondent
regarding existing IP Claims identical to its chosen domain name precluded good
faith registration of <genelogic.biz> when Respondent registered it with
“full knowledge that his intended business use of this domain name was in
direct conflict with a registered trademark of a known competitor in exactly
the same field of business”).
The <bankofamerica.biz>
domain name is identical to Complainant's BANK OF AMERICA mark and the Internet
user will likely believe that there is an affiliation between Respondent and
Complainant. Registration of the <bankofamerica.biz>
domain name despite it being identical is evidence of bad faith pursuant to
STOP Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that 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 Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the
domain name <bankofamerica.biz> be transferred from
Respondent to Complainant and subsequent challenges under the STOP Policy
against this domain name shall not be permitted.
Sandra Franklin, Panelist
Dated: July 8, 2002
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