national arbitration forum

 

DECISION

 

Bank of America Corporation v. Private Whois Service

Claim Number: FA1102001371060

 

PARTIES

Complainant is Bank of America Corporation (“Complainant”), represented by Melissa G. Ferrario of Womble Carlyle Sandridge & Rice, PLLC, North Carolina, USA.  Respondent is Private Whois Service (“Respondent”), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myeasypaymentbankofamerica.com>, registered with INTERNET.BS CORP.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2011; the National Arbitration Forum received payment on February 2, 2011.

 

On February 3, 2011, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <myeasypaymentbankofamerica.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name.  INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@myeasypaymentbankofamerica.com.  Also on February 7, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <myeasypaymentbankofamerica.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 <myeasypaymentbankofamerica.com> domain name.

 

3.    Respondent registered and used the <myeasypaymentbankofamerica.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Bank of America Corporation, is a worldwide financial institution. Complainant owns the BANK OF AMERICA mark and has used the mark since 1928 in connection with its wide range of financial services including services offered at its <myeasypayment.com> website.  Complainant holds numerous trademark registrations for its BANK OF AMERICA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 853,860 registered July 30, 1968).

 

Respondent, Private Whois Service, registered the <myeasypaymentbankofamerica.com> domain name on September 21, 2009.  The disputed domain name resolves to a website which prominently displays Complainant’s BANK OF AMERICA mark and well-known Stripes Design logo and screenshots from Complainant’s official websites.  The resolving site also hosts advertisements and third-party links to Complainant’s competitors within the financial services industry. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts its rights in its BANK OF AMERICA mark.  Previous panels have determined that a complainant can establish rights in a mark through federal trademark registration.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”)  Prior panel decisions have not required a complainant to register the mark within the country of the respondent.  See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Here, Complainant holds multiple trademark registrations for its BANK OF AMERICA mark with the USPTO (e.g., Reg. No. 853,860 registered July 30, 1968).  Therefore, the Panel finds that Complainant has established rights in its BANK OF AMERICA mark according to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <myeasypaymentbankofamerica.com> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark. The disputed domain name incorporates Complainant’s mark in its entirety.  The domain name only differs through the deletion of spaces between words of the mark, the addition of the generic top-level domain (“gTLD”) “.com,” and the addition of the phrase “myeasypayment,” which clearly references Complainant’s <myeasypayment.com> website and financial services.  The Panel finds that the deletion of spaces between words of a mark and the affixation of a gTLD do not properly distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).  The Panel also finds that adding a descriptive word or phrase to Complainant’s mark, one that clearly relate to the financial services Complainant provides, does not overcome a finding of confusing similarity.  See  Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).  The Panel concludes that Respondent’s <myeasypaymentbankofamerica.com> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent has no rights or legitimate interests in the <myeasypaymentbankofamerica.com> domain name.  In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel 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 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.  Here, Complainant has made a prima facie case in support of its allegations against Respondent.  Due to Respondent’s failure to submit a response to the Complaint, the Panel is allowed to assume that Respondent has no rights and legitimate interests under Policy ¶ 4(a)(ii).  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).  However, the Panel opts to look at the record in order to determine whether Respondent has any rights or legitimate interests under Policy ¶ 4(c). 

 

Complainant argues that Respondent is not commonly known by the <myeasypaymentbankofamerica.com> domain name.  The WHOIS information provided identifies Respondent as “Private Whois Service,” which is not similar to the disputed domain name.  Complainant asserts that it has not consented to, or licensed, Respondent’s use of the BANK OF AMERICA mark within the disputed domain name.  Discovering no additional evidence contradicting Complainant’s assertions, the Panel concludes 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). 

 

Respondent uses the disputed domain name to operate a website which displays Complainant’s BANK OF AMERICA mark, its Stripes Design logo, and screenshots from Complainant’s official website in a general attempt to look like Complainant’s <myeasypayment.com> website.  The resolving website also features links to third-party sites, some of which directly compete with Complainant in the financial services industry.  The Panel finds that Respondent’s use of the disputed domain name to operate a website to mislead Internet users that Respondent is associated with Complainant, and to direct users to Complainant’s competitors, is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s use of the <myeasypaymentbankofamerica.com> domain name disrupts its business.  Respondent’s resolving website intentionally tries to create a likelihood of confusion with Complainant and displays Complainant’s mark and logo along with third-party links to some of Complainant’s competitors in the financial services industry.  Internet users intending to utilize Complainant’s financial services might find Respondent’s website instead due to the confusingly similar disputed domain name.  Internet users might discover the third-party links on the resolving website and utilize a competitor’s financial services as a result.  The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business, which is evidence of bad faith use and registration under Policy ¶ 4(b)(iii).  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also 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)).

 

The Panel infers that Respondent likely receives click-through fees from the previously mentioned third-party links.  Internet users looking for Complainant’s website may find Respondent’s website as a result of the confusingly similar disputed domain name.  Users might become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving site, and third-party links.  Respondent tries to capitalize off this confusion through the receipt of click-through fees.  The Panel finds that Respondent’s use of the <myeasypaymentbankofamerica.com> domain name for commercial gain constitutes bad faith use and registration 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 Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met. 

 

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 <myeasypaymentbankofamerica.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  March 10, 2011

 

 

 

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