Bank of America Corporation v. Franky Tong
Claim Number: FA0210000128074
Complainant is Bank of America Corporation, Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones, of Alston & Bird LLP. Respondent is Franky Tong, Tseung Kwan O, HONG KONG (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationbank.com>, registered with Tucows, Inc.
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 October 14, 2002; the Forum received a hard copy of the Complaint on October 17, 2002.
On October 15, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <nationbank.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 October 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 7, 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 December 4, 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.
The <nationbank.com> domain name is confusingly similar to Complainant’s NATIONSBANK mark.
Respondent has no rights or legitimate interests in the <nationbank.com> domain name.
Respondent registered and used the <nationbank.com> domain name in bad faith.
Respondent has failed to submit a Response.
Complainant owns service mark registrations with the United States Patent and Trademark Office for the NATIONSBANK mark (Reg. Nos. 1,688,466; 1,976,832; and 2,199,561). Complainant also owns a registration for the NATIONSBANK mark in Hong Kong (Reg. No. B08473/1999).
Complainant exclusively uses the NATIONSBANK mark to identify its banking and financial services. These services have been advertised under the NATIONSBANK mark throughout the world. Complainant operates a website at <nationsbank.com>, which further promotes its banking and financial related services. The NATIONSBANK mark is a valuable asset for Complainant as the public associates Complainant’s quality services by identification of the mark.
Respondent registered the <nationbank.com> domain name on September 19, 2001. Respondent uses the domain name to divert Internet users to a search engine website labeled “Try the Top Searches on the Web!” Complainant unsuccessfully tried to communicate with Respondent on two separate occasions regarding the domain name. Respondent has been a losing party in a prior domain name dispute that involved a common misspelling of the EXPEDIA mark, <expedie.com>. Respondent’s <expedie.com> domain name also resolved to a search engine website.
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.
Identical and/or Confusingly Similar
Complainant has established rights in the NATIONSBANK mark through proof of service mark registration with the United States Patent and Trademark Office and with the relevant authority in Hong Kong, Respondent’s place of domicile.
Respondent’s <nationbank.com> domain name contains a common typographical error of Complainant’s NATIONSBANK mark. The second-level domain merely omits the “s” from the NATIONSBANK mark. It has been consistently held that omitting one letter from another entity’s mark and incorporating the resulting phrase in a domain name does not defeat a claim of confusing similarity. In addition, the generic top-level portion of the <nationbank.com> domain name, “.com,” is irrelevant in a Policy ¶ 4(a)(i) analysis because generic top-level domains are required in domain names. Therefore, Respondent’s <nationbank.com> domain name is confusingly similar to Complainant’s NATIONSBANK mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant submitted a prima facie Complaint and thus Respondent is charged with the burden of establishing rights or legitimate interests in the <nationbank.com> domain name. Respondent, however, failed to come forward and submit a Response. The Panel, therefore, presumes that Respondent has no such rights or legitimate interests based on Complainant’s uncontested arguments. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Furthermore, the Panel accepts Complainant’s allegations as true and will drawn all reasonable inferences in favor of Complainant because Respondent has not challenged the Complaint. 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 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).
Respondent uses the <nationbank.com> domain name to resolve to a search engine website. Presumably, Respondent benefits commercially from diverting users to the search engine created by the <nationbank.com> domain name. The second-level domain, “nationbank,” has no apparent logical connection with search services because it is suggestive of financial services. Respondent opportunistically uses the confusingly similar version of Complainant’s NATIONSBANK mark to increase its “hits” at the resulting search engine website. Respondent’s actions do not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is the use a legitimate noncommercial or fair use pursuant to 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 the Complainant’s mark by redirecting Internet traffic to its own website); 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).
Complainant is the exclusive user of the NATIONSBANK mark and Respondent has no permission to use the mark or any variation thereof. There is no evidence on the record indicating that Respondent is commonly known by the <nationbank.com> domain name. The only evidence of Respondent’s identity suggests that Respondent is known as Franky Tong. Therefore, Respondent has no rights or legitimate interests in the <nationbank.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <nationbank.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has been a party in a previous domain name dispute whereby Respondent registered <expedie.com> (which was determined to be confusingly similar to the EXPEDIA mark), and diverted Internet traffic to a search engine. Respondent lost the <expedie.com> domain name because it was trading off of the goodwill associated with the EXPEDIA mark. The same facts are present in the immediate case where Respondent uses the <nationbank.com> domain name to resolve to a search engine. Thus, it is evident Respondent is trading off of the goodwill of the NATIONSBANK mark by diverting Internet traffic to its search engine for profit. Diverted Internet users, most likely searching for Complainant’s NATIONSBANK services, will no doubt become confused as to Complainant’s association with the search engine. Respondent opportunistically registered the <nationbank.com> domain name and uses it to infringe on Complainant’s interests in the NATIONSBANK mark. Therefore, the Panel finds bad faith registration and use of the <nationbank.com> domain name under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (presuming Respondent profits from its diversionary use of Complainant’s mark when Respondent’s domain name resolves to commercial websites and Respondent fails to contest the Complaint, therefore, concluding bad faith pursuant to Policy ¶ 4(b)(iv)); see also Goto.com, Inc., v. Walt Disney Co., 200 F.3d 1199, 1206 (9th Cir., 2000) (“With respect to Internet services, even services that are not identical are capable of confusing the public”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the domain name <nationbank.com> be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 9, 2002
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