Bank of America Corporation v. Azra Khan
Claim Number: FA0209000124515
Complainant is Bank of America Corporation, Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP. Respondent is Azra Khan, Rawalpindi, PAKISTAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwbankamerica.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 4, 2002; the Forum received a hard copy of the Complaint on September 9, 2002.
On September 6, 2002, Iholdings.com confirmed by e-mail to the Forum that the domain name <wwwbankamerica.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 September 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 30, 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 October 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 <wwwbankamerica.com> domain name is confusingly similar to Complainant’s registered BANK OF AMERICA and BANKAMERICA marks.
2. Respondent does not have any rights or legitimate interests in the <wwwbankamerica.com> domain name.
3. Respondent registered and used the <wwwbankamerica.com> domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant, Bank of America Corp., represents the largest consumer bank in the United States and one of the world’s most well-known financial institutions. Complainant has obtained several registrations of its BANK OF AMERICA and BANKAMERICA marks throughout the world, including U.S. Patent and Trademark Office (“USPTO”) Service Mark Reg. Nos. 853,860 (issued July 30, 1968) and 965,288 (issued July 31, 1973).
Complainant obtained the rights of its predecessor, BankAmerica, by way of a 1998 merger that created Complainant’s present organization. For many years prior to the 1998 mergers, BankAmerica provided a wide variety of banking and financial services in various parts of the world. While conducting international operations BankAmerica made extensive use of the service marks and trade names BANK OF AMERICA and BANKAMERICA to promote, advertise and provide its services.
The services of Complainant and its predecessor have been advertised and promoted extensively under the BANK OF AMERICA mark worldwide in various forms of media. Complainant also conducts operations from the <bankamerica.com> and <bankofamerica.com> domain names. By reason of the adoption and continuous use of Complainant’s BANK OF AMERICA and BANKAMERICA marks, those designations have a distinctive quality specific to Complainant and its financial services.
Respondent registered the <wwwbankamerica.com> domain name December 22, 2001. Complainant’s investigation of Respondent’s use of the subject domain name has revealed that Respondent is using the <wwwbankamerica.com> domain name to direct Internet users to a website located at <magazines.com>. The aforementioned website contains links to pages where subscriptions to various financial institutions and related magazines are offered.
Complainant also indicates that Respondent has developed a pattern of registering domain names incorporating misspellings and typographical errors of Complainant’s service marks. More specifically, Respondent previously used the <banckofamerica.com> domain name to link to the <magazines.com> website that the current disputed domain name resolves to. Complainant’s Submission indicates that the <banckofamerica.com> domain name was transferred to Complainant by way of a UDRP proceeding. See Bank of Am. Corp. v. Azra Khan, FA 114324 (Nat. Arb. Forum July 5, 2002).
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 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 has established rights in the BANK OF AMERICA and BANKAMERICA marks by registering its marks with the USPTO and subsequent continuous use of the marks in relation to its financial services.
Respondent’s <wwwbankamerica.com> domain name is identical to Complainant’s BANKAMERICA mark but for the inconsequential addition of the “www” prefix to the second-level domain. Previous Panels have determined that the addition of typographical errors, such as incorporating the world-wide-web moniker into a domain name absent the period separating it from the rest of the second-level domain, fail to distinguish a mark from an infringing domain name, especially when the subject mark is famous. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has not submitted a Response in this proceeding, leaving Complainant’s averments and evidence unopposed. Therefore, the Panel is permitted to make all reasonable 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”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Furthermore, because Complainant’s Submission constitutes a prima facie case the burden shifts to Respondent. Respondent’s lack of participation in this proceeding evidences its lack of rights and legitimate interests in the <wwwbankamerica.com> domain name. See 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 has provided the Panel with uncontested circumstances that indicate Respondent is opportunistically using the infringing domain name to resolve to a commercial website. Respondent presumably benefits from diverting unsuspecting Internet traffic to the <magazines.com> domain name. Respondent’s diversionary use of the domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Furthermore, Respondent’s use of a famous trademark to direct Internet traffic to a website conducting operations under a dissimilar name evidences Respondent’s lack of genuine rights and interests in the domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
As stated in the Findings, Respondent has previously registered variations of Complainant’s famous marks; thus, supporting a finding that Respondent lacks rights or interests in the domain name. There is no apparent connection between the second-level domain “wwwbankamerica” and Respondent, except for Respondent’s pattern of infringing activity. Because of the fame associated with Complainant’s BANKAMERICA mark, it is presumed that Respondent is not commonly known by a domain name that incorporates the mark in the second-level domain pursuant to Policy ¶ 4(c)(ii). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”); see also 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).
Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).
Previous interpretations of the bad faith circumstances listed under Policy paragraph 4(b) indicate that the criteria are non-exhaustive. Additionally, the Panel may consider the “totality of circumstances” when determining if Respondent registered the domain name in bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list 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”).
Because of Respondent’s record of registering infringing domain names that incorporate Complainant’s marks, it is apparent that Respondent had knowledge of Complainant’s rights in the marks prior to registering the domain name. Not only has Respondent been involved in previous Forum decisions with Complainant, but Respondent is using an internationally recognized mark that imparts constructive knowledge on all those that seek to infringe on the mark or any confusingly similar variation thereof. Respondent’s intentional registration of a domain name, despite knowledge of Complainant’s rights, indicates 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 bad faith use of the <wwwbankamerica.com> mark is illustrated by the fact that Respondent’s domain name resolves to a commercial website. As stated, Respondent is engaged in the act of typosquatting, whereby a registrant registers a confusingly similar variation of a famous mark in order to benefit from Internet users who are unknowingly diverted to the infringing domain name and corresponding website. Respondent, by definition, is attempting to opportunistically benefit from the fame of Complainant’s BANK OF AMERICA and BANKAMERICA marks and presumably receives some form of compensation; thus, Respondent is using the <wwwbankamerica.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant).
Additionally, Respondent’s practice of “typosquatting” has been recognized as a bad faith use of a domain name under the UDRP. See e.g. AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwbankamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 28, 2002
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