Bank of America Corporation v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA1002001305972
Complainant is Bank
of America Corporation (“Complainant”), represented by Edgar T. Watson, of Robinson Bradshaw & Hinson,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <mail-bankofamerica.com>, <privacysourcebankofamerica.com>, <privacybankofamerica.com>, <bankofamericanetbenefits.com>, <bankonkofamerica.com>, <bankamericamyeasypayment.com>, <bankofafamerica.com>, and <bankofamericainvestment.com>, registered with Above. 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 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@mail-bankofamerica.com, postmaster@privacysourcebankofamerica.com, postmaster@privacybankofamerica.com, postmaster@bankofamericanetbenefits.com, postmaster@bankonkofamerica.com, postmaster@bankamericamyeasypayment.com, postmaster@bankofafamerica.com, and postmaster@bankofamericainvestment.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mail-bankofamerica.com>, <privacysourcebankofamerica.com>, <privacybankofamerica.com>, <bankofamericanetbenefits.com>, <bankonkofamerica.com>, <bankamericamyeasypayment.com>, <bankofafamerica.com>, and <bankofamericainvestment.com> domain names are confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <mail-bankofamerica.com>, <privacysourcebankofamerica.com>, <privacybankofamerica.com>, <bankofamericanetbenefits.com>, <bankonkofamerica.com>, <bankamericamyeasypayment.com>, <bankofafamerica.com>, and <bankofamericainvestment.com> domain names.
3. Respondent registered and used the <mail-bankofamerica.com>, <privacysourcebankofamerica.com>, <privacybankofamerica.com>, <bankofamericanetbenefits.com>, <bankonkofamerica.com>, <bankamericamyeasypayment.com>, <bankofafamerica.com>, and <bankofamericainvestment.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bank of America Corporation, provides financial
products and services. Complainant
offers these financial products and services under its BANK OF AMERICA mark and
has done so since 1928. Complainant
holds multiple trademark registrations with the United States Patent and
Trademark Office ("USPTO") for its BANK OF AMERICA mark (e.g., Reg. No. 1,466,524 issued
Respondent, Transure Enterprises Ltd., registered the <mail-bankofamerica.com>, <privacysourcebankofamerica.com>,
<privacybankofamerica.com>, <bankofamericanetbenefits.com>, <bankonkofamerica.com>,
<bankamericamyeasypayment.com>, <bankofafamerica.com>,
and <bankofamericainvestment.com> domain names no earlier
than
Respondent has been
a respondent in multiple UDRP proceedings in which disputed domain names
were transferred from Respondent to the complainants in those cases. See
State Farm Mut. Auto. Ins. Co. v. Transure Enter. Ltd., FA 1176762 (Nat. Arb. Forum
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.
Respondent, Transure Enterprises Ltd., registered the <mail-bankofamerica.com>, <privacysourcebankofamerica.com>,
<privacybankofamerica.com>, <bankofamericanetbenefits.com>, <bankonkofamerica.com>,
<bankamericamyeasypayment.com>, <bankofafamerica.com>,
and <bankofamericainvestment.com> domain names no earlier
than
Complainant contends it has established rights in the BANK
OF AMERICA mark. Complainant holds
multiple trademark registrations of the BANK OF AMERICA mark with the USPTO (e.g., Reg. No. 1,466,524 issued
Complainant contends that Respondent’s <mail-bankofamerica.com>, <privacysourcebankofamerica.com>,
<privacybankofamerica.com>, <bankofamericanetbenefits.com>, <bankonkofamerica.com>,
<bankamericamyeasypayment.com>, <bankofafamerica.com>,
and <bankofamericainvestment.com> domain names are confusingly
similar to Complainant’s BANK OF AMERICA mark.
All of the disputed domain names feature Complainant’s BANK OF AMERICA
mark and remove the spaces between the terms of the mark. The disputed domain names simply add a
hyphen, generic terms, and/or letters to Complainants mark. In addition, the <bankamericamyeasypayment.com>
domain name removes the term “of”
from Complainant’s mark. All of
the disputed domain names include the addition of the generic top-level domain
(“gTLD”) “.com.” The Panel finds the
additions of a hyphen, generic terms, letters, and gTLDs along with the removal
spaces and of a term from Complainant’s mark do not adequately distinguish the
disputed domain names from Complainant’s mark.
See Bond & Co. Jewelers, Inc.
v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain names. Previous panels have found that when a
complainant makes a prima facie case
in support of its allegations, the burden shifts to the respondent to prove
that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant has made a 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 names.
However, the Panel will examine the record to determine whether
Respondent has rights or legitimate interests in the disputed domain names
under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Respondent has offered
no evidence, and there is no evidence in the record, suggesting that Respondent
is commonly known by the <mail-bankofamerica.com>, <privacysourcebankofamerica.com>,
<privacybankofamerica.com>, <bankofamericanetbenefits.com>, <bankonkofamerica.com>,
<bankamericamyeasypayment.com>, <bankofafamerica.com>,
and <bankofamericainvestment.com> domain names.
Complainant asserts that Respondent is not authorized to use the BANK OF
AMERICA mark. The WHOIS information
identifies the domain name registrant as “Transure Enterprises Ltd.,” which
Complainant contends is not similar to the disputed domain name. Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See IndyMac
Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); 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 names to resolve to websites featuring hyperlink
directories. The hyperlinks resolve to
third-parties, some of which compete with Complainant in the financial products
and services industry. Respondent likely
receives click-through fees from the aforementioned hyperlinks. The Panel finds
this use of the confusingly similar disputed domain names is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v.
In addition, Respondent’s use of the <bankofafamerica.com>
and <bankonkofamerica.com> domain
names, misspelling of Complainant’s BANK OF
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges Respondent’s use of the <mail-bankofamerica.com>, <privacysourcebankofamerica.com>,
<privacybankofamerica.com>, <bankofamericanetbenefits.com>, <bankonkofamerica.com>,
<bankamericamyeasypayment.com>, <bankofafamerica.com>,
and <bankofamericainvestment.com> domain names is a part of a pattern of bad faith use and
registration. Respondent has been a
respondent in multiple UDRP proceedings in which disputed domain names
were transferred from Respondent to the complainants in those cases. See
State Farm Mut. Auto. Ins. Co. v. Transure Enter. Ltd., FA 1176762 (Nat. Arb. Forum
Respondent’s disputed domain names resolve to websites containing lists of hyperlinks that
resolve to third-parties. Some of the
third-parties directly compete with Complainant in the financial products and
services industry. Complainant claims
that Respondent’s use of the disputed domain names disrupts Complainant’s financial
products and services business because Internet users looking to buy financial
products or services from Complainant may be redirected to Complainant’s
competitors through Respondent’s confusingly similar websites. Thus, the Panel finds Respondent’s use of the
disputed domain names does disrupt Complainant’s financial products and
services business and constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum
Feb. 13, 2007) (concluding 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 Policy ¶ 4(b)(iii));
see also Am. Airlines, Inc.
v. Tex. Int’l Prop. Assoc.,
FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where
the respondent’s website featured hyperlinks to competing websites and included
a link to the complainant’s website, the respondent’s use of the
<redeemaamiles.com> domain name constituted disruption under Policy ¶
4(b)(iii)).
The Panel infers
Respondent receives click-through fees from the hyperlinks relating to
Complainant’s competitors in the financial products and services industry as
well as the unrelated third-party websites.
Internet users may become confused as to Complainant’s affiliation with and/or
sponsorship of the third-party hyperlinks and website resolving from the
disputed domain names. The Panel finds
Respondent’s receipt of click-through fees constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc.
v. Siddiqi, FA 721969
(Nat. Arb. Forum July 18, 2006) (finding that the
respondent engaged in bad faith registration and use by using a domain name
that was confusingly similar to the complainant’s mark to offer links to
third-party websites that offered services similar to those offered by the
complainant); see also Univ. of Houston
Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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).”).
Furthermore, Respondent has engaged in typosquatting through
its use of the <bankofafamerica.com> and <bankonkofamerica.com> domain
names, which are misspellings of Complainant’s BANK OF AMERICA mark by adding
letters to Complainant’s mark.
Therefore, the Panel finds Respondent’s engagement in the practice of
typosquatting additionally constitutes bad faith registration and use pursuant
to Policy ¶ 4(a)(iii).
See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the
respondent engaged in typosquatting, which is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA
154528 (Nat. Arb. Forum
The Panel finds 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 <mail-bankofamerica.com>, <privacysourcebankofamerica.com>, <privacybankofamerica.com>, <bankofamericanetbenefits.com>, <bankonkofamerica.com>, <bankamericamyeasypayment.com>, <bankofafamerica.com>, and <bankofamericainvestment.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 12, 2010
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