Bank of America Corporation v. Chan Ning
Claim Number: FA0207000117323
PARTIES
Complainant
is Bank of America Corporation,
Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones, of Alston
& Bird, LLP. Respondent is Chan Ning, Hung Hom, Hong Kong, CHINA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bankkofamerica.com>,
registered with Iholdings.com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 30, 2002; the Forum received a hard copy of the
Complaint on August 1, 2002.
On
August 1, 2002, Iholdings.com confirmed by e-mail to the Forum that the domain
name <bankkofamerica.com> is
registered with Iholdings.com and that Respondent is the current registrant of
the name. Iholdings.com has verified
that Respondent is bound by the Iholdings.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
August 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 21,
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@bankkofamerica.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
September 12, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Judge Harold Kalina
(Ret.) 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 makes the following
assertions:
1. Respondent’s <bankkofamerica.com> domain name is confusingly similar to
Complainant’s registered BANK OF AMERICA mark.
2. Respondent does not have any rights or
legitimate interests in the <bankkofamerica.com>
domain name.
3. Respondent registered and uses the <bankkofamerica.com> domain name
in bad faith.
B. Respondent failed to submit a Response in
this dispute.
FINDINGS
Complainant holds several registrations
incorporating the BANK OF AMERICA mark throughout the world, including U.S.
Patent and Trademark Office Reg. No. 853,860, registered on July 30, 1968.
Complainant also owns Hong Kong Reg. No. B06964, reflecting the BANK OF AMERICA
mark and registered with the authorized authorities on July 7, 1997.
Complainant is the largest consumer bank
in the United States and represents one of the world’s most established and
recognized financial institutions. Complainant’s financial services have been
extensively advertised under the BANK OF AMERICA mark in various forms of
media.
Complainant also conducts its financial
operations from the <bankofamerica.com> domain name. Complainant’s domain
name resolves to a website that represents a vital part of its marketing program
and is used to promote Complainant’s wide variety of financial services. In
advertising and promoting its services to the public under the BANK OF AMERICA
mark and trade name, Complainant has expended tens of millions of dollars
annually.
Because of the extensive and longstanding
continuous use of Complainant’s BANK OF AMERICA mark, the mark has a
distinctive quality and has acquired valuable goodwill as a source identifier
of Complainant and its banking services.
Respondent registered the <bankkofamerica.com> domain name
on June 20, 2002. Respondent is using the subject domain name to direct
Internet users to an Internet “links” website entitled “Top Internet Searches.”
Complainant’s investigation has revealed that Respondent’s attached website
contains links to, among other things, providers of financial services. The
financial institutions listed on Respondent’s website are not sponsored,
approved, promoted by or associated with Complainant.
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 demonstrated its rights
in the BANK OF AMERICA mark through successfully completing registration of the
mark with various worldwide authorities, including Hong Kong, Respondent’s
place of domicile. Complainant has also extensively used the BANK OF AMERICA
mark in conjunction with its financial and banking services since at least
1968.
Respondent’s <bankkofamerica.com> domain name is confusingly similar to
Complainant’s BANK OF AMERICA mark. Respondent’s domain name incorporates
Complainant’s registered mark in its entirety, and is identical but for the
adoption of a common typographical error. Previous Panel decisions have
determined that the intentional introduction of random letters to a famous mark
fails to overcome a claim of confusing similarity under Policy ¶ 4(a)(i).
Furthermore, because spaces are not allowed in second-level domains, they are
considered inconsequential when conducting a confusingly similar analysis. See Hannover Ruckversicherungs-AG v. 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 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent failed to contest
Complainant’s assertions; therefore, all reasonable inferences made by
Complainant may be regarded as true. Once Complainant asserts that Respondent
does not have any rights or legitimate interests in the disputed domain name,
the burden shifts to Respondent to provide credible evidence that supports its
claim of validity in the domain name. Because Respondent did not submit
evidence substantiating its claim in the <bankkofamerica.com>
domain name, Respondent has failed to advance any set of circumstances that
would support its rights in the domain name. See Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true); see also Parfums Christian Dior v.
QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
Complainant’s Submission indicates that Respondent’s domain
name resolves to an “Internet links website titled ‘Top Internet Searches.’” Although
this website contains a generic search engine and represents a bare minimum of
development, it lists providers of financial services. Respondent uses the
infringing domain name to divert Internet users that incorrectly key
Complainant’s domain name to competing websites. Such opportunistic
exploitation of the <bankkofamerica.com>
domain name is not in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using Complainant’s
mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that “[I]t would be unconscionable to find a bona fide offering of
services in Respondent’s operation of website using a domain name which is confusingly
similar to Complainant’s mark and for the same business”).
There is no evidence that indicates
Respondent represents a bank, investment firm or other financial institution.
Furthermore, no information has been provided to this Panel that suggests
Respondent is commonly known by the “bankkofamerica” second-level domain or the
<bankkofamerica.com> domain
name pursuant to Policy ¶ 4(c)(ii). Moreover, because Respondent’s registration
and use of the subject domain name resembles the infringing act of
typosquatting, it is presumed that Respondent does not have rights or
legitimate interests in the <bankkofamerica.com>
domain name. 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 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).
The Panel finds that Respondent lacks rights or legitimate
interests in the <bankkofamerica.com>
domain name pursuant to Policy ¶ 4(a)(ii).
Policy paragraph 4(b) presents a
non-exhaustive listing of bad faith criteria. When deciding whether Respondent
registered or used the domain name in bad faith it is proper for the Panel to
consider the “totality of circumstances” surrounding the dispute and its
origin. See Cellular One Group v. Brien,
D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of
the Policy do not constitute an exhaustive listing 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 registration and
diversionary use of the <bankkofamerica.com>
domain name represents an instance of typosquatting, whereby confusingly
similar versions of famous marks are registered and used in order to profit
from their goodwill. Because of Respondent’s domicile in China, it is usually
difficult for an American corporation to establish that Respondent was at least
constructively aware of Complainant’s mark. However, in the present case,
Complainant holds a registration for the BANK OF AMERICA mark registered in
1997 in Hong Kong, Respondent’s place of domicile. When considering the
aforementioned “totality of circumstances,” it is evident that Respondent
intentionally registered a confusingly similar version of Complainant’s famous
mark. Such registration, despite knowledge of Complainant’s preexisting rights
in the BANK OF AMERICA mark, represents bad faith registration under Policy ¶
4(a)(iii). See 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); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given the worldwide prominence of the mark and thus Respondent registered the
domain name in bad faith).
Respondent’s use of the established mark
to divert Internet users to its search engine, which offers competing services,
represents bad faith use under Policy ¶ 4(b)(iii). Previous Panels have endorsed
a broad definition of competitor, being one who acts in opposition to another.
Respondent’s infringing use the domain name, which resolves to a website that
lists competing financial services, satisfies this burden. See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000)
(defining “competitor” as "…one who acts in opposition to another and the
context does not imply or demand any restricted meaning such as commercial or
business competitor”); see also Lubbock
Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23,
2000) (concluding that domain names were registered and used in bad faith where
Respondent and Complainant were in the same line of business in the same market
area).
Additionally, Respondent’s practice of
“typosquatting” has been recognized as a bad faith use of a domain name under
the UDRP; thus, further supporting a finding of bad faith registration and use
under Policy ¶ 4(a)(iii). See, e.g.,
Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000)
(awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD mark 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.
DECISION
Having established all three elements
required under ICANN Policy, the Panel concludes that relief should be hereby GRANTED.
Accordingly, it is Ordered that the <bankkofamerica.com> domain name
be TRANSFERRED from Respondent to
Complainant.
Judge Harold Kalina (Ret.). Panelist
Dated:
September 24, 2002
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page