Bank of America Corporation v. Nh Kim
Claim Number: FA0803001169817
Complainant is Bank of America Corporation (“Complainant”), represented by Randel
S. Springer, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ustrustbank.com>, registered with Onlinenic, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
3, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 23, 2008
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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <ustrustbank.com> domain name is confusingly similar to Complainant’s U.S. TRUST mark.
2. Respondent does not have any rights or legitimate interests in the <ustrustbank.com> domain name.
3. Respondent registered and used the <ustrustbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bank of America Corporation, provides banking
and financial services throughout the
Respondent, Nh Kim, registered the <ustrustbank.com> domain name on November 25, 2006 and is currently using the disputed domain name to display links and advertisements offering banking, investment, and personal financial services in direct competition with 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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 alleges rights to the U.S. TRUST mark based on its USPTO trademark registration. Under the Policy, registration of a mark with the pertinent government authority, such as the USPTO, confers rights in that mark to a complainant. Complainant has thus established rights to the U.S. TRUST mark for purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant alleges Respondent’s <ustrustbank.com> domain name is confusingly similar to its U.S. TRUST mark. The disputed domain name contains Complainant’s entire mark without spaces or periods, adding the term “bank” and the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a gTLD, spacing, and removal of periods to be irrelevant in distinguishing the disputed domain name from Complainant’s mark because all domain names require a gTLD. The Panel also finds the addition of the generic term “bank” does not negate the confusingly similar nature between Complainant’s mark and the disputed domain name, particularly because the term “bank” describes Complainant’s business. Therefore, the Panel concludes that Respondent’s <ustrustbank.com> is confusingly similar to Complainant’s U.S. TRUST mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or
legitimate interests in the <ustrustbank.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to show it does have rights or legitimate interests under Policy
¶ 4(a)(ii). Based on the allegations in
the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶
4(a)(ii). Since Respondent has not
responded to the Complaint, the Panel may assume Respondent does not have
rights or legitimate interests. However,
the Panel will examine the record to determine if such rights or legitimate
interests are present pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
Complainant alleges Respondent is not commonly known by the <ustrustbank.com>
domain name. The WHOIS information
identifies Respondent as “Nh Kim” and no other information is provided
suggesting Respondent might be commonly known by the disputed domain name. Pursuant to Policy ¶ 4(c)(ii), the Panel
concludes Respondent lacks rights and legitimate interests in the <ustrustbank.com>
domain name. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Complainant alleges Respondent lacks rights or legitimate interests in the <ustrustbank.com> domain name because the disputed domain name is not in connection with a legitimate noncommercial or fair use, and does not provide a bona fide offering of goods or services. Respondent is currently using the disputed domain name to display advertisements and website links to products and services in direct competition with Complainant. The Panel presumes Respondent earns click-through fees for each redirected Internet user. As such, the Panel finds Respondent’s use and registration of the <ustrustbank.com> domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As previously stated, Respondent’s <ustrustbank.com>
domain name currently resolves to a
website displaying links to Complainant’s competitors. The Panel finds this registration and use of
the disputed domain name disrupts Complainant’s business and constitutes bad
faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO
Respondent’s <ustrustbank.com> domain name contains Complainant’s entire mark, which creates a likelihood of confusion as to Complainant’s sponsorship and affiliation with the disputed domain name. The Panel also presumes Respondent is earning referral fees for each redirected Internet user. Based on the above, the Panel finds the use and registration of Respondent’s <ustrustbank.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <ustrustbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 7, 2008
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