National Arbitration Forum
DECISION
Bank of America Corporation
v. ehrenkranz assoc.
Claim Number: FA0905001262257
PARTIES
Complainant is Bank of America
Corporation (“Complainant”), represented by Melissa G. Ferrario, of Womble Carlyle Sandridge & Rice, PLLC,
North Carolina, USA. Respondent is ehrenkranz assoc. (“Respondent”), Tennessee,
USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cabankofamerica.com>, <californiabankofamerica.com>, <flbankofamerica.com>, <floridabankofamerica.com>, <newyorkbankofamerica.com>, and <nybankofamerica.com>,
(“the disputed domain names”) and they are registered with Godaddy.com, Inc. (“Godaddy”).
PANEL
The undersigned, Mr. David H
Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on May 12, 2009; the Forum received a hard copy of the
Complaint on May 13, 2009.
On May 13, 2009, Godaddy confirmed by e-mail to the Forum that all six of
the disputed domain names were registered with it and that the Respondent is
the current registrant of the names.
Godaddy has verified that Respondent is bound by its 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 May 22, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding, setting a deadline of June 11, 2009 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@cabankofamerica.com,
postmaster@californiabankofamerica.com,
postmaster@flbankofamerica.com,
postmaster@floridabankofamerica.com,
postmaster@newyorkbankofamerica.com,
and postmaster@nybankofamerica.com
by e-mail.
A timely Response was received and determined to be complete on June
10, 2009.
Additional Submissions were received from Complainant on June 16, 2009
and from Respondent on June 22, 2009 both of which were found by the Forum to
be in compliance with its Forum’s Supplemental Rule 7.
On June 18, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Mr. David H Tatham as
Panelist.
RELIEF SOUGHT
Complainant requests that all of the disputed domain names be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that it is one of the world’s largest financial
institutions, with more than 6,100 banking centres, not only all over the United States,
but in more than 40 other countries as well.
Complainant is the proprietor of numerous registrations throughout the
world for the trademark BANK OF AMERICA,
including the following two US registrations –
853,860 for “Commercial, savings, loan, trust departments, and credit
financing banking services” in Class 36 which was registered on July 30, 1968
claiming April 30, 1928 as its date of first use.
2,713,72 for a lengthy list of goods and services in Classes 16, 35, 36
and 38 which was registered on May 6, 2003 claiming dates of first use
variously in 1928, 1998, and 1999.
Complainant also owns the <bankofamerica.com>
domain name which it uses to promote its services.
Complainant contends that the disputed domain names were all registered
on or about January 28, 2008 using Domain by Proxy’s privacy shield service
but, on being approached by Complainant, Domain by Proxy revealed that they
were in truth owned by Respondent.
He refused Complainant’s request to transfer the disputed names to Complainant.
Complainant contends that all of the disputed domain names are
confusingly similar to its BANK OF AMERICA trademarks, arguing that it has been
established in other Decisions under the Policy that the addition of geographic
designations to a Complainant’s trademark is sufficient for a finding of
similarity.
Complainant contends that Respondent has no rights or legitimate
interest in the disputed domain names because it has not consented to or
licensed Respondent to use the names, because he has no connection or
affiliation with itself, and because he is not known by any of the disputed
domain names.
Complainant alleges that Respondent uses the disputed domain names to
operate link farms and that he can therefore be presumed to benefit
commercially as the recipient of click-through fees from these links, and
contends that this is neither a bona fide
offering of goods or services nor a legitimate non-commercial or fair use.
Complainant also alleges bad faith on the part of Respondent because
his use of names which contain Complainant’s trademark is an attempt to create
confusion and benefit from the goodwill in its trademarks.
Complainant contends, furthermore, that Respondent had constructive
knowledge of its trademarks before registering the disputed domain names, which
is further evidence of bad faith. In
addition, given Complainant’s size and the fact that it is one of the world’s
largest financial institutions it is highly unlikely that Respondent was
unfamiliar with Complainant’s name and trademarks before registering the
disputed domain names.
Complainant also contends that Respondent’s use of its entire trademark
in each of the disputed domain names is a further indication of bad faith and
clear evidence of illegitimate use.
Complainant states that there can be no plausible explanation as to why
Respondent incorporated its trademark into the disputed domain names other than
to trade on its goodwill.
B. Respondent
Respondent claims to have 20 plus years of experience in the fields of
insurance and finance and to be the owner of a group of domain names which
relate to the field of finance, insurance, banking etc.
One of these is <nysavingsaccount.com>. He plans to develop these names into websites
which will provide a large amount of information about the financial services
industry, and which will be used to educate consumers about all areas of
finance and insurance so that they may make intelligent decisions about their
finances. Some of these names
include words such as ‘bank’ or ‘annuity’ and Respondent contends that, as a
result, it has a very legitimate right and interest in all of the
disputed domain names.
Respondent denies that he registered the disputed names in bad faith,
and asserts that if that had been the case, he might have promoted them more
advantageously, as he does with others of his name that are promoted
commercially while parked. He also
claims that, when he was informed by Complainant’s attorney that his
registration of the names was illegal, he made a commitment to remove the sites
at them, and he states that this removal was actually done 30 days prior to the
filing of the Complaint. Copies of
all the shut-down sites were annexed to the Response.
Respondent denies Complainant’s assertion that the websites on two of
the disputed domain names have links to financial service providers, some of
whom compete with Complainant, and Respondent accuses Complainant of attempting
to harass him, which is contrary to the Certification statement included in the
final paragraph of the Complaint.
Respondent alleges that the fact that the names were posted on a link
farm site is due to a misunderstanding and he blames Godaddy’s “cash parking”
scheme for this. He accepts that the
sites do contain some advertisements, although their purpose is entirely to
inform the reader, and he contends that this proves that he does have legitimate
rights and interest in the names.
Respondent denies Complainant’s claim that he received any fees from
any of the names. He admits that he
does receive some fees, but states that they all come to him in a bulk report
which does not mention any of his many names individually.
He claims not to receive more than $30 per month from this source.
Respondent cites two Decisions under the Policy which, he claims, prove
that a Complainant may not hold exclusive rights to all forms of a name.
Respondent contends that Complainant is quite wrong to state
categorically that he had constructive knowledge of its trademarks, and queries
how it could possibly know that.
Furthermore he is not, as Complainant claims, intending to trade on the latter’s
goodwill. He again claims that his
only intention was to offer financial information and this, he alleges, is not
‘trading’.
Respondent recites his recollection of a conversation which he had with
Complainant’s counsel and he says that the statement, in the Complaint, that
during this conversation he said that he was trying to profit from the names is
quite false. All he had said was
that he was attempting to recover his costs over the preceding two years. He states that he is well aware that people do buy
domain names, sometimes for several thousand dollars, but he is not one of them.
Respondent contends that there is no evidence that he used the disputed
domain names illegally. He denies
acting in bad faith, trying to sell the names, using them for commercial gain,
or having any intention of attempting to detract business from Complainant, and
he cited several Decisions under the Policy in support of all these claims.
Respondent points out that even though Complainant quotes its immense
size, it never took the opportunity of spending a few dollars on registering
domain names of “all the states with the trademark name”.
Respondent expresses hurt that Complainant should be harassing him and
not even trying to settle the matter amicably, and concludes that he has never
tried to harm, damage, or in any way act in bad faith towards the Complainant.
C. Additional Submissions
Complainant
In its Additional Submission, Complainant notes that Respondent has not
challenged its rights to the name and trademark BANK OF AMERICA and indeed has
conceded that the disputed domain names are similar to its trademark.
Complainant also notes that once a Complainant has made out a prima facie case that the respondent has
no legitimate rights or interest in a disputed domain name, then it is up to
the Respondent to show that he has.
In this case, Respondent has not and he cannot satisfy its burden of proof.
On the question of the use of the disputed domain names in connection
with link farms. Complainant points
out that Respondent’s statement that two of the names contain no mention of
financially related links is untrue, as is proved by one of the annexes to the
Response. Complainant also quotes
from Godaddy’s website to the effect that revenue can be earned through the use
of its CashParking service.
Complainant asserts that Respondent’s use of this service is neither a bona fide offering of goods or services,
nor is it a legitimate, non-commercial, or fair use under the Policy. Furthermore, Complainant contends that Respondent
is a sophisticated domainer owning hundreds of domain names so it is entirely
disingenuous to claim that the use of the disputed domain names in connection
with link farms was a misunderstanding.
Moreover, even after receiving notice of the dispute, Respondent continued to
use the disputed domain names in connection with link farms and only removed
the link when the amended Complaint had been filed.
Complainant also dismisses Respondent’s claim that its plans to develop
the disputed domain names in the future are legitimate, quoting both the
wording of the Policy to the contrary as well as a Decision in 2000. Respondent has not demonstrated that it had made
any preparations to use the names.
With regard to the question of bad faith, Complainant states that any
suggestion that Respondent had no actual knowledge of its famous name and
trademark BANK OF AMERICA is unbelievable, particular since Respondent claims
to have 20 years’ experience in the financial services industry. However it states that actual knowledge is not
required by the Policy.
The fact that the disputed domain names contained link farms is proof
that they had the potential at least to generate revenue fees and this supports
a finding that Respondent has intentionally attempted to attract, for
commercial gain, users to its websites.
Respondent’s claim that it derived little or no revenue from the sites is,
according to Complainant, irrelevant because the intention was there.
Respondent
In its Additional Submission, Respondent complains that he has been
misrepresented and falsely accused by Complainant.
He asserts that he proved in his Response that before he received any notice of
the dispute he had made demonstrable preparations to use the disputed domain
names as an “informational financial
related site”, and that they will forward visitors to his
<nysavingsaccount.com> site which
has been operational for many, many months.
He also challenges Complainant’s claim that the websites at the
disputed domain names showed links to financial planning sites, and as proof
thereof he annexed copies of pages from two of the disputed domain names <nybankofamerica.com>
and <flbankofamerica.com>.
Respondent also claims that during his conversation with Complainant’s
attorney in March 2009 he reached an oral Agreement – which he says is binding
in the State of Tennessee
– to “remove the Domain Names from the
so-called link farms with-in 120 days” and he claims that he did this well
in advance of the deadline. He
believes that Complainant’s assertion otherwise is only in order to be able to
say that Respondent took this action in response to the filing of the Complaint,
and he accuses Complainant of violating the agreement and of acting itself in
bad faith. Respondent also
challenges Complainant’s statement that there was a “lengthy delay” in removing the link farms from the sites, and
states that it was in fact a very short time later and contrasts this delay of
some 6 months with the 80 years in which Complainant has been in business.
Respondent also challenges Complainant’s quotation from Godaddy’s
CashParking programme, pointing out that an important phrase was omitted by
Complainant. He contends that in
fact any advertisements on the pages are put there at random and at Godaddy’s
discretion.
FINDINGS
Complainant, Bank of America Corporation, is a large financial
institution trading throughout the world.
It owns many registrations of the name and trademark BANK OF AMERICA, including
two in the USA,
claiming use since 1928.
Respondent claims to have 20 plus years of experience in the fields of
insurance and finance, although without providing any evidence thereof. He is apparently the owner of one or more domain
names which relate to the field of finance, insurance, banking etc. and plans to develop these names into websites
which will provide information about the financial services industry.
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.
Identical and/or Confusingly
Similar
Complainant has established, to the
satisfaction of the Panel, that it has substantial rights in the trademark BANK
OF AMERICA. Complainant holds
several registrations of this mark with the USPTO and it was said in Expedia,
Inc. v.
Tan, FA 991075 (Nat. Arb.
Forum June 29, 2007) that “As the [complainant’s] mark is registered with the
USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).” Also, in Morgan Stanley v.
Fitz-James, FA 571918 (Nat.
Arb. Forum Nov. 29, 2005) the Panel
determined that, from a preponderance of evidence that the complainant had
registered its mark with national trademark authorities, “such registrations
present a prima facie case of Complainant’s rights in the mark for purposes of
Policy ¶ 4(a)(i).” Complainant also
claims to have registrations of the trademark BANK OF AMERICA worldwide and,
although no evidence thereof has been submitted, this would not be a surprise
for a company of the size and global prominence of Complainant.
All of the disputed domain names contain this
trademark BANK OF AMERICA, merely adding the geographical denominations California, Florida, New York, or their
corresponding abbreviations CA, FL, and NY.
It was held, for example, in MFI UK Ltd. v.
Jones, D2003-0102 (WIPO May 8, 2003) that the domain name <mfiuk.com> was confusingly similar to the
complainant’s MFI mark because the addition of the letters UK was merely a common designation for the United Kingdom. Also, in
Skype Ltd. & Gannett Co. v. Chan,
D2004-0117 (WIPO Apr. 8, 2004) it
was said that “…it is well established that a domain name consisting of a
well-known mark, combined with a geographically descriptive term or phrase, is
confusingly similar to the mark.”
Complainant claims that Respondent had constructive knowledge of its
trademarks. This is impossible to
prove one way or the other and indeed Respondent denies it. However there must be a strong suspicion that Respondent
knew about Complainant and its name before he registered the disputed domain
names. If not, why did he include
Complainant’s exact name in all of them? Why not use <bankofusa> for
example? As Complainant points out, it is inconceivable for someone claiming to
be involved in the financial industry and who runs a website advising clients
on their savings, not to have heard of Complainant and its name.
Whilst it is true that, as Respondent says, there can be circumstances
in which someone may not own the exclusive rights to a particular name. There are many examples of corporations in
different industries using the same trademark without confusion. However the present case does not fall into that
category. Complainant has trademark
registrations all over the world for BANK OF AMERICA in respect of financial
services and it claims that this name has been in use for over 80 years. It is not unreasonable therefore to conclude that
Complainant has exclusivity for the phrase ‘Bank of America’ for these services.
Respondent contends that the disputed domain names are comprised of common,
descriptive terms and as such cannot be found to be confusingly similar to
Complainant’s mark. However, in the
opinion of the Panel this is irrelevant as, under paragraph 4(a)(i) of the
Policy, it is only necessary to decide whether Complainant has rights in the
mark and whether the disputed domain names are identical or confusingly similar
to Complainant’s mark. For example,
it was found in Vance Interntaional, Inc. v.
Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) that because the complainant
had received a trademark registration for its VANCE mark, the respondent’s
argument that the term was generic failed under paragraph 4(a)(i) of the Policy.
With regard to the question of similarity between Complainant’s
trademark and the disputed domain names, it is well established that, when
comparing a domain name with a trademark the mere addition of a generic
top-level domain such as “.com” is
not sufficient to adequately distinguish the domain name from the mark. See, for example, Jerry Damson, Inc. v. Texas International Property Associates, FA
916991 (Nat. Arb. Forum Apr.
10, 2007); see also Bond & Co.
Jewelers, Inc. v. Texas International Property Associates., FA 937650 (NAF Apr. 30, 2007) in which it was
found that the elimination of spaces between terms and the addition of a gTLD
do not establish distinctiveness from the complainant’s mark under paragraph
4(a)(i)); as well as Trip Network Inc. v.
Alviera, FA 914943 (NAF March 27, 2007) the Panel concluded that the
addition of a gTLD, whether it be “.com,”
“.net,” “.biz,”
or “.org,” is irrelevant to a
paragraph 4(a)(i) analysis). While
in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) it
was found 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.
In conclusion, the Panel finds that each of the six disputed domain
names – <cabankofamerica.com>, <californiabankofamerica.com>, <flbankofamerica.com>, <floridabankofamerica.com>, <newyorkbankofamerica.com>, and <nybankofamerica.com>
- is confusingly similar to Complainant’s trademark BANK OF AMERICA, and that
paragraph 4(a)(i) of the Policy is therefore proved.
Rights or Legitimate Interests
It is well established that if a Complainant has succeeded in making
out a prima facie case that Respondent lacks rights and legitimate
interests in the disputed domain names, then the burden shifts to the
Respondent to show it does have rights or legitimate interests. See, for
example, Hanna-Barbera Producionts, Inc. v. Entertainment
Commentaries, FA 741828 (Nat.
Arb. Forum Aug. 18, 2006) in which
it was held that the complainant must first make a prima facie case that
the respondent lacks rights and legitimate interests in the disputed domain
name under paragraph 4(a)(ii) of the UDRP before the burden shifts to the
respondent to show that it does have rights or legitimate interests in a domain
name; and in AOL LLC v.
Gerberg, FA 780200 (Nat. Arb.
Forum Sept. 25, 2006) it was said
that “Complainant must first make a prima facie showing that Respondent does
not have rights or legitimate interest in the subject domain names, which
burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”
In the present
case, the Panel finds that Complainant has made out a prima facie case and that it was
therefore up to Respondent to refute it.
In the opinion of the Panel he has failed to do so.
Complainant alleges that the sites at the disputed domain names contain
what it calls “link farms.” The Panel is not familiar with this phrase, but it
is by no means uncommon for domain name registrars to offer programmes under
which it is the registrar who chooses which links to put on the website of a
newly registered domain name. In the
present case the registrar in question is Godaddy and Complainant’s Additional
Submission contains a selected quote from Godaddy’s CashParking service. Respondent states that a key phrase was omitted
from this quotation and that, furthermore, Complainant’s claim that among the
links on two of the websites are some which are finance-related is incorrect. In fact both parties are guilty of misinformation for,
although Complainant’s quotation may not have been complete, the
‘evidence’ submitted by Respondent in his Additional Submission is clearly
incomplete. The finance-related
links referred to by Complainant are in a box which is headed “Popular
Categories” underneath the other links, however in the ‘evidence’ submitted by
Respondent to refute this claim, this box has been omitted.
The Panel notes that although Godaddy states that the links which it
will place on a website are “context-related” the links on two of the websites
relate entirely to Costa Rica
and have nothing to do with banking or America.
However some of the links on the other four do actually refer to Complainant. The Panel therefore feels that Complainant has
every right to object. This is
especially so if, as Complainant alleges, Respondent is gaining income from the
click-through fees of internet users who visit the site and who might,
inadvertently or not, click on a reference to Complainant.
Respondent admits receiving some income from Godaddy, but denies that any of
the money came from any of these six sites.
However the denial is not very convincing.
The links on all the websites have now been removed, and although there
is a dispute between the parties about when and why this occurred, this is not
relevant and the Panel notes that they were certainly in position when
Complainant originally took copies of them i.e., on November 25 and December 5,
2008, prior to filing its original Complaint.
Registration and Use in Bad Faith
The Panel found, above, that the disputed
domain names are all being used with
hyperlinks by which Respondent could, and probably has, collected click-through
fees. This is evidence of bad faith
registration and use and so contrary to paragraph 4(b)(iv) of the Policy. For example, it was held in University of Houston System v. Salvia Corporation, FA
637920 (Nat. Arb. Forum Mar. 21, 2006) that “Respondent is using the disputed domain name to operate a website which
features links to competing and non-competing commercial websites from which
Respondent presumably receives referral fees. Such use for Respondent’s own commercial
gain is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv).” And in T-Mobile USA, Inc. v.
utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) it was held that the
registration and use of a domain name confusingly similar to a complainant’s
mark to direct Internet traffic to a commercial “links page” in order to profit
from click-through fees or other revenue sources constitutes bad faith under paragraph
4(b)(iv)of the Policy.
Also, although Complainant did not make the assertion, Respondent’s use
of the disputed domain names, along with the aforementioned competing
hyperlinks on the websites, disrupts Complainant’s business and this is
evidence of bad faith registration and use under paragraph 4(b)(iii) of the
Policy as was held in American Airlines, Inc.
v. Texas International Property
Associates, FA 914854 (Nat.
Arb. Forum Apr. 10, 2007) where the
respondent’s website featured hyperlinks to competing websites and included a
link to the complainant’s website.
Also, in Tesco Personal Finance Ltd.
v. Domain Management Services, FA 877982
(Nat. Arb.
Forum Feb. 13, 2007), the Panel
concluded that the use of a confusingly similar domain name to attract Internet
users to a directory website containing commercial links to the websites of a
complainant’s competitors represents bad faith registration and use under paragraph
4(b)(iii) of the Policy.
As a consequence, the Panel finds that all six of the disputed domain
names were registered in bad faith, and that paragraph 4(a)(iii) has been
proved.
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 <cabankofamerica.com>, <californiabankofamerica.com>, <flbankofamerica.com>, <floridabankofamerica.com>, <newyorkbankofamerica.com>, and <nybankofamerica.com>
domain names be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: June 29, 2009
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