Bank of America Corporation
v. NHsupport, LLC
Claim Number: FA0805001194788
PARTIES
Complainant is Bank of America Corporation (“Complainant”), represented by Randel
S. Springer, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bankofamericasearch.com> and <bankofamericasupport.com>,
registered with Wild West Domains, Inc.
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.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On May 29, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 18, 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 postmaster@bankofamericasearch.com and
postmaster@bankofamericasupport.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
A. The Domain Names Are Confusingly
Similar to Complainant’s Trademarks.
Complainant’s registration of its marks with a
national authority is sufficient to establish that Complainant has trademark
rights for purposes of 4(a)(i). See Bank of Am. Corp. v. Whois Privacy
Protection Service, Inc., FA 604717 (Nat. Arb. Forum Jan. 27, 2006) (
Complainant asserts that the domain names
registered by Respondent are confusingly similar to Complainant’s BANK OF
AMERICA marks. Both domain names include
Complainant’s identical BANK OF AMERICA mark combined with additional
descriptive words, namely, <bankofamericasearch.com>
and <bankofamericasupport.com>.
The addition of descriptive words,
namely “search” and “support” to the identical BANK OF AMERICA mark does not
create domain names that are distinct from Complainant’s marks. See Am. Online, Inc. v. Anytime Online
Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that
respondent’s domain names, which incorporated complainant’s entire name and
merely added descriptive terms, did not add any distinctive features capable of
overcoming a claim of confusing similarity).
The fact that the domain names contain the “.com”
top-level domain does not keep them from being confusingly similar to
Complainant’s marks. It has been held by a number of panels applying the Policy
that the addition of a top-level domain, such as “.us,” “.com,” “.net,” or “.org,”
to a trademark does not sufficiently differentiate the resulting domain name
from the trademark, and that such a domain name is confusingly similar to the
incorporated trademark. See CAT Holdings v. Vat.com, D2000-0607 (WIPO
Aug. 22, 2000) (“[t]he panel applies the principle that in assessing identity,
the portion “.com” of the domain name is to be ignored and the comparison is to
be with the characterizing part. This has been a principle applied in many
prior decisions under the ICANN policy.”). Therefore, Respondent’s domain names
are confusingly similar to Complainant’s BANK OF AMERICA trademarks.
B. Respondent Has No Rights or
Legitimate Interests in the Domain Names.
Complainant asserts that Respondent has no
legitimate rights or interests in the domain names. Respondent has no connection or affiliation
with Complainant and Complainant has not consented to or licensed Respondent’s
use of the domain names. Furthermore,
Respondent’s business is not known by the names "BANK OF AMERICA
SUPPORT" or “BANK OF AMERICA SEARCH.”
Decisions applying the Policy have found that
the fact that a respondent is not known by a mark indicates the respondent has
no rights in the mark. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat.
Arb. Forum Jan. 23, 2001) (finding that the respondent does not have
rights in a domain name when the respondent is not known by the mark). Moreover, the websites contain the following
statement “[t]his website is parked free courtesy of Design the Right.com” and
contain advertisements for various on-line related services such as domain name
registration and website design. Complainant
respectfully submits that domain name management and website design are not
services that an Internet user would typically associate with the name “Bank of
America,” unless such services were endorsed or affiliated with Complainant. Thus, Respondent’s use of the term “Bank of America”
in connection with such services or advertisements does not appear to be based
on a legitimate interest.
In Bank of America Corp. v. Whois
Privacy Protection Service, Inc., FA 604717 (Nat. Arb. Forum Jan. 27, 2006), the panel
stated “it has widely been held under the Policy that a respondent’s use of
domain names that incorporate another’s trademark to derive financial gain
through referral fees is not a use in connection with a bona fide offering of
goods or services under [the] Policy.” See also Am. Heart Ass’n Inc. v. Whois Privacy Protection
Serv., Inc., FA 463122 (Nat. Arb. Forum May 31, 2005) (use of americanheartassociation.com
to operate search engine featuring health related websites was not a bona fide offering of goods or services
or legitimate use); see also Yahoo! Inc. v. Whois Privacy Protection
Serv., Inc., FA 412705 (Nat. Arb. Forum Mar. 17, 2005) (no legitimate use
where respondent received click through fees to advertise services which
competed with complainant’s services).
C. Respondent Has Registered and
Is Using the Domain Names in Bad Faith.
Complainant respectfully asserts that
Respondent has registered the domain names in bad faith. Paragraph 4(b) of the
Policy sets forth a non-exclusive list of factors for determining bad faith. These factors include whether the domain name
has been used to attract users to the respondent’s web site by creating a
likelihood of confusion with the complainant’s mark for the respondent’s
commercial gain. Clearly, Respondent
registered the domain names with the intent to divert users seeking information
about Complainant’s services to Respondent’s web sites.
Respondent is using the domain dames to redirect Internet users
searching for Complainant’s financial services and products to Respondent’s
advertisements, many of which display links from which Respondent presumably
earns referral fees. Furthermore,
Respondent’s use of Domain Names that contain the identical and confusingly
similar BANK OF AMERICA mark intentionally attempt to attract, for commercial
gain, Internet users to Respondent’s web sites by creating a likelihood of
confusion with Complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of Respondent’s websites or products or services on such
websites. See Bank
of Am. Corp. v. Spiral Matrix, FA 612013 (Nat. Arb. Forum
Feb. 2, 2006) (“The registration and use of confusingly similar versions of
[c]omplainant’s mark to divert Internet users for [r]espondent’s commercial
gain is evidence of bad faith registration and use under Policy 4(b)(iv).”); see alsoBank of Am. Corp. v. Whois Privacy Protection Serv., Inc.,
FA 604717 (Nat. Arb. Forum Jan. 27, 2006) (respondent’s attempt to attract
Internet users to its website by creating a likelihood of confusion was an
attempt to benefit off the goodwill of the Bank of America marks).
Respondent had constructive knowledge of Complainant’s
BANK OF AMERICA marks prior to registration of the Domain Names which further
supports an inference of bad faith on the part of the Respondent. Complainant’s
registrations serve as constructive notice of its rights in the BANK OF AMERICA
Marks. See Landry’s Rest.,
Inc. v. Landry’s Rest., Inc., FA 506524 (Nat. Arb. Forum Aug. 12, 2005)
("Registration of confusingly similar domain names despite constructive
knowledge or actual knowledge is bad faith registration and use pursuant to
Policy."); see also Pfizer, Inc. v. United Phar.,
Ltd., D2001-0446 (WIPO June 8, 2001) (actual or constructive knowledge of the
complainant’s rights in the trademarks is a factor supporting bad faith); see
also Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO Apr.
18, 2000). Furthermore, since Complainant is one of the world’s largest
financial institutions with more than 177,000 employees worldwide, it is highly
unlikely that Respondent was unfamiliar with Complainant’s BANK OF AMERICA mark
at the time the Domain Names were registered. See Eastman Chemical Co. v.
B. Respondent
Respondent asserts that
the domain names <bankoramericasupport.com>
and <bankofamericasearch.com> registered
are not confusing for the public and/or corporate entities. Respondent’s argues
that if the domain name were more closely related to <bankofamerica.com>
domain then they might be more similar, such is not the case according to him.
Respondent argues that
the default page hosted at <choosetherightbusiness.com> is not a pay-per click site and to
this day Respondent has made no money off anyone clicking on any links on the
default hosted page that states “coming soon… this web-site is parked free
courtesy of DesignTheRight.com!”
Respondent argues that
he does not receive any user
traffic that would even constitute a claim of directing users to his web site
for financial gain. He also alleges that
the amount of hits are so insignificant that if the default site were to be a
“pay-per click site”(which it is not)
it wouldn’t even cover the cost of the domains and the tech-time that is needed
to make it visible and functional on the web.
Respondent also argues that trademark
infringement on the web is common and gives the following example: <www.microsoftsearch.com>
and/or < microsoftsupport.com>,
<bestbuysupport.com> and/or <bestbuysearch.com>,
and <walmartsuport.com> and/or <walmartsearch.com>
Respondent contends that the list of
services relating to the trademark BANK OF AMERICA is outdated and does not
include anything relating to Internet services.
Respondent contends that
he owns a similar site, <microsoftsearch.com>, which according to him, shows
his intended use of those types of sites. He contends it does not display company
information and/or copyrights; has no direct related links on the front page
and contains only a search box for web users’ discretional searching. Respondent
contends that recent search listings on the front page are by category, not by company
names. Respondent contends that the site front page is not confusing and is
obviously not related to trademark holder “Microsoft.”
Respondent says he is the rightful owner of the registered domain names
<bankofamericasupport.com> and
<bankofamericasearch.com>.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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 assert rights in the BANK
OF AMERICA mark through registration of the mark with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 853,860 issued July 30, 1968). The Panel finds that Complainant’s valid
registration of the BANK OF AMERICA mark establishes rights under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding
that the complainant had established rights in the PENTIUM, CENTRINO and INTEL
INSIDE marks by registering the marks with the USPTO); see also Miller Brewing Co. v.
Miller Family, FA 104177
(Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established
rights to the MILLER TIME mark through its federal trademark registrations).
The Panel finds that Complainant has rights
in the mark under Policy ¶ 4(a)(i), and that the
disputed domain names are confusingly similar to Complainant’s BANK OF AMERICA
mark. The <bankofamericasearch.com> and <bankofamericasupport.com>
domain names contain the mark in its entirety. The only addition
to Complainant’s mark are two terms: “support” and “search.” Complainant contends that these terms are
generic and do not sufficiently distinguish the disputed domain names from the
mark. The Panel also find that the
addition of the generic top-level domain “.com” does not affect an analysis
under Policy ¶ 4(a)(i). See 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 Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term).
The Panel finds
that there is no evidence in the record or in the WHOIS registration that Respondent
is commonly known by the disputed domain names. Thus the Respondent is not commonly known by
the <bankofamericasearch.com> and
<bankofamericasupport.com> domain names under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
Complainant
alleges Respondent uses the disputed domain names to host third-party links in
direct competition with Complainant’s business. The Panel finds that this use is not 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 Am. Online, Inc. v. Advanced Membership Services, Inc., FA
180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent’s registration and use of
the <gayaol.com> domain name with the intent to divert Internet users to
Respondent’s website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Complainant claims that Respondent’s use of the <bankofamericasearch.com> and <bankofamericasupport.com>
domain names to commercially gain by advertising links to competing services
constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
The Panel finds that Respondent’s disputed domain names are confusingly
similar to Complainant’s mark and are likely to cause confusion as to the
source, sponsorship, affiliation or endorsement of Respondent’s website under
Policy ¶ 4(b)(iv), presumably for Respondent’s
commercial gain. See Bank of Am. Corp. v.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamericasearch.com> and <bankofamericasupport.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: July 3, 2008
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