Bank of America Corporation v. Pinnacle Management Group, Inc.
Claim Number: FA1105001388276
Complainant is Bank of America Corporation (“Complainant”), represented by Melissa G. Ferrario of Womble Carlyle Sandridge & Rice, PLLC, North Carolina, USA. Respondent is Pinnacle Management Group, Inc. (“Respondent”), represented by Ian Andersen of Northern Payment Systems, Inc., Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bofamerchantservices.com>, registered with GODADDY.COM, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 10, 2011; the National Arbitration Forum received payment May 11, 2011.
On May 12, 2011, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <bofamerchantservices.com> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@bofamerchantservices.com. Also on May 13, 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 June 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Respondent submitted “other correspondence” that did not meet the requirements of a formal Response.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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, without the benefit of a formal Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <bofamerchantservices.com>, is confusingly similar to Complainant’s B OF A mark.
2. Respondent has no rights to or legitimate interests in the <bofamerchantservices.com> domain name.
3. Respondent registered and used the <bofamerchantservices.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bank of America Corporation, is a large global provider of financial and banking services. Complainant owns multiple trademark registrations for the B OF A mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 847, 761 issued April 16, 1968). Complainant uses the mark extensively in marketing and promotional campaigns.
Respondent, Pinnacle Management Group, Inc., registered the disputed domain name May 13, 2005. The disputed domain name resolves to a site offering services that compete directly with Complainant’s own offerings.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 offered evidence that it registered the B OF A mark with the USPTO and contends that these registrations provide defendable rights in the mark. Registering a mark with the USPTO is sufficient to establish one’s rights under the UDRP. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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.”). The Panel finds that Complainant established irights in the B OF A mark under Policy ¶ 4(a)(i) by registering that mark with the USPTO (e.g., Reg. No. 847, 761 issued April 16, 1968).
Complainant contends that Respondent’s <bofamerchantservices.com> domain name is confusingly similar to its B OF A mark. The disputed domain name includes the entire mark while removing the spaces and adding a generic top-level domain (“gTLD”). The disputed domain name also includes the descriptive terms “merchant” and “services.” The Panel finds that the removal of spaces, adding the gTLD “.com,” along with the addition of two words does not sufficiently differentiate the disputed domain name from Complainant’s mark. Therefore, the two are confusingly similar under Policy ¶ 4(a)(i). 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)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
The Panel finds that Complainant met its initial burden of proof by a making a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name. Because Complainant made prima facie showing that Respondent lacks rights or interests, the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has not offered a response in this case which allows the Panel to assume it lacks rights or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). The Panel still examines the entire record before making a determination relative to Respondent’s rights or legitimate interests in the disputed domain name pursuant to the factors listed in Policy ¶ 4(c).
Respondent has offered no evidence to show that it is commonly known by the disputed domain name and Complainant contends that Respondent is not commonly known by the <bofamerchantservices.com> domain name. The WHOIS information identifies the registrant as “Pinnacle Management Group, Inc.,” which the Panel finds is not nominally similar to the disputed domain name. Thus, the Panel also finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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).
Complainant further alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a site offering merchant payments systems for sale and use. Complainant also offers a similar competing product and service through its own business. Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), by resolving to a site offering services that seek to directly compete with Complainant using Complainant’s own mark. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of 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 Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s disputed domain name resolves to a site that disrupts its business. Respondent’s <bofamerchantservices.com> domain name resolves to a site that offers a service that directly competes with Complainant’s own service offerings. An Internet user may get diverted to the site via the confusingly similar domain name and then purchase services from Respondent instead of Complainant. The Panel finds that this use disrupts Complainant’s business and supports findings of Respondent’s bad faith registration and use under Policy ¶ 4 (b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Respondent’s disputed domain name resolves to a site offering services related to merchant payment systems. Complainant also offers the same product. Complainant asserts that Respondent is commercially gaining from this diversion scheme and that Respondent registered and used the disputed domain name in bad faith. The Panel finds that Respondent likely profits from the confusingly similar domain name by diverting Internet users to its site and selling competing goods. The Panel also finds that this use supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bofamerchantservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 16, 2011.
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