Bank of America Corporation v. Registrant Registrant
Claim Number: FA0912001298319
Complainant is Bank of America Corporation (“Complainant”), represented by Edgar
T. Watson, of Robinson Bradshaw & Hinson PA,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bankofamrerica.com>, registered with Moniker.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 14, 2009.
On December 10, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <bankofamrerica.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 December 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2010 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@bankofamrerica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <bankofamrerica.com> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <bankofamrerica.com> domain name.
3. Respondent registered and used the <bankofamrerica.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bank of America Corporation, is the second-largest banking company in the world, and supports clients across 150 countries. Complainant and its predecessors have used the BANK OF AMERICA mark (Reg. No. 853,860 issued July 30, 1968 by the United States Patent and Trademark Office (“USPTO”)) since 1928. Complainant also owns and operates the <bankofamerica.com> domain name.
Respondent registered the <bankofamrerica.com> domain name on March 4, 2003. Respondent’s disputed domain name resolves to a website displaying third-party links to websites offering financial and banking services in competition 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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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
mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the
USPTO (Reg. No. 853,860 issued July 30, 1968).
See Miller Brewing
Complainant argues that Respondent’s <bankofamrerica.com> domain name is confusingly
similar to Complainant’s BANK OF AMERICA mark pursuant to Policy ¶
4(a)(i). Respondent’s disputed domain name
contains a misspelled version of Complainant’s BANK OF AMERICA mark, omits
spaces, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a disputed domain name
that contains a misspelled version of a complainant’s mark, in this case the
insertion of an “r,” fails to bring about a distinguishing characteristic and
instead creates a confusing similarity between the disputed domain name and the
complainant’s mark. See 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); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks). In
addition, the Panel finds that the addition of a gTLD and the omission of
spacing in a disputed domain name are irrelevant in distinguishing a disputed
domain name from a registered mark. See Reese v. Morgan, FA 917029 (Nat.
Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic
top-level domain “.com” is insufficient to differentiate a disputed domain name
from a mark); see also Bond & Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the registrant of the disputed domain name as “Registrant” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain name, which it registered on March 4, 2003, to
display links advertising third-party websites in competition with
Complainant’s offering of financial and banking services. The Panel infers that Respondent is using the
disputed domain name to earn click-through fees, and thus finds that Respondent
has not made 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
Respondent’s disputed domain name qualifies as typosquatting, given
the misspelling of the BANK OF AMERICA mark.
As such, Respondent’s attempt to capitalize on the typographical errors
of Internet users constitutes evidence that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb.
Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate
interests in the disputed domain names”); see
also Microsoft Corp. v. Domain
Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that
promotes Complainant’s competitors in the financial and banking services
industries through click-through links.
Such an activity clearly disrupts Complainant’s business, as Internet
users seeking Complainant’s products will be redirected to Complainant’s
competitors. This qualifies as bad faith
registration and use under Policy ¶ 4(b)(iii).
See
Complainant contends that Respondent is gaining commercially
through this diversion, through click-through fees that Respondent is
presumably receiving from its use of the disputed domain name. The Panel finds
that Respondent is intentionally using the disputed domain name for commercial gain
through a likelihood of confusion with Complainant’s mark, and so, pursuant to
Policy ¶ 4(b)(iv), the Panel finds that this use for commercial gain also
constitutes evidence of registration and use in bad faith. See
T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding 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 Policy ¶ 4(b)(iv)); see also
Complainant alleges that typosquatting is itself evidence of
bad faith registration and use under Policy ¶ 4(a)(iii). The Panel agrees and finds that Respondent’s disputed domain name
is merely a typosquatted version of Complainant’s BANK OF AMERICA mark, and
that such typosquatting constitutes bad faith registration and use under Policy
¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamrerica.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 28, 2010
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