Bank of America Corporation v. Chan Ning
Claim Number: FA0207000117323
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.
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.
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 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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
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