Bank of America Corporation v. [Registrant]
Claim Number: FA1205001444744
Complainant is Bank of America Corporation (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is [Registrant] (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofamericareo.net>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2012; the National Arbitration Forum received payment on May 18, 2012.
On May 22, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bankofamericareo.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 2012 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@bankofamericareo.net. Also on May 23, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant own multiple trademark registrations and applications for the BANK OF AMERICA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 853,860 registered July 30, 1968). Complainant also owns trademark registrations with other international trademark authorities, such as with the IP Australia (“IPA”) (e.g., Reg. No. B218679 registered April 23, 1968), China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No 2,019,004 registered August 7, 2004), and the Intellectual Property Office of Philippines (“IPOPHL”) (e.g., Reg. No. 4-1998-007290 registered September 24, 2005), among others. Complainant began using its BANK OF AMERICA mark in April 1928 in its business as a financial institution to promote its credit financing, banking, loan, and saving services. Complainant owns a domain name, <bankofamerica.com>, that it uses to provide financial information to its website visitors, including information on real estate investment and foreclosure purchases.
Respondent registered the <bankofamericareo.net> domain name on or about April 15, 2010, and the resolving website displays Google advertisements that generate “click-through” fees. The advertisements link to third-party commercial websites that provide information and offer services that are similar to Complainant’s foreclosure businesses. The disputed domain name is confusingly similar to Complainant’s mark. Respondent cannot claim rights or legitimate interests in the disputed domain name, has no affiliation with Complainant, and did not secure permission from Complainant to use its mark. Respondent attracts visitors to its website by use of prominently featured advertisements, from which Respondent commercially benefits. Respondent had constructive knowledge of Complainant’s trademarks before it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds a registered trademark for the BANK OF AMERICA mark in the United States and elsewhere. Respondent did not submit a Response in this proceeding.
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."
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.
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.”).
Complainant alleges that it owns extensive trademark registrations for its BANK OF AMERICA mark with national authorities around the world, including the USPTO (e.g., Reg. No. 853,860 registered July 30, 1968), the IPA (e.g., Reg. No. B218679 registered April 23, 1968), the SAIC (e.g., Reg. No 2,019,004 registered August 7, 2004), and the IPOPHL (e.g., Reg. No. 4-1998-007290 registered September 24, 2005). The panel in Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), held that the ownership of trademark registrations with trademark authorities internationally serves to establish rights in the complainant’s mark. Although the current WHOIS information for the registrant of the disputed domain name does not contain a location, nonetheless, the Panel finds that Policy ¶ 4(a)(i) does not mandate Complainant’s registration of its mark in the country where Respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel holds that Complainant’s many trademark registrations with various different international authorities serves to demonstrate Complainant’s rights in its BANK OF AMERICA mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that the <bankofamericareo.net> domain name is confusingly similar to its BANK OF AMERICA mark. Complainant alleges that adding the abbreviation “REO,” short for the descriptive phrase “real-estate owned,” does not distinguish the domain name from Complainant’s mark. Additionally, Complainant argues that the fact that the disputed domain name includes the generic top-level domain (“gTLD”) “.net” does not keep the <bankofamericareo.net> domain name from being confusingly similar to the BANK OF AMERICA mark. The disputed domain name also fails to include the spaces between the terms of the BANK OF AMERICA mark. The Panel concludes, based on Policy ¶ 4(a)(i), that including an abbreviation for a descriptive phrase, removing the spaces from Complainant’s mark, and adding the gTLD “.net,” make the disputed domain name confusingly similar to Complainant’s mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no legitimate rights or interests in the <bankofamericareo.net> domain name, that Complainant has not consented to Respondent’s use of the disputed domain name, and that Respondent is not known by the name “Bank of America REO.” Complainant submits evidence of the WHOIS record corresponding to the disputed domain name, which indicates that the registrant used a privacy service to shield its identity. Complainant contends that, at the time the Amended Complaint was submitted, the privacy shield was lifted, disclosing that the registrant of the disputed domain name did not provide contact information or a name. The Panel therefore finds that, without consent from Complainant to use its mark and the WHOIS information, Respondent is not commonly known by the <bankofamericareo.net> domain name under Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant argues that Respondent’s lack of rights or legitimate interests is demonstrated by the content on the resolving website, which Complainant asserts includes Google-sponsored advertisements from which Respondent undoubtedly commercially benefits. Complainant alleges that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Panel holds that by maintaining a website that displays advertisements for Respondent’s commercial profit, Respondent does not make use of the disputed domain name in a manner demonstrating a bona fide offering of goods or services Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the <bankofamericareo.net> domain name to make a commercial gain by collecting fees from website visitors who click on the sponsored advertisements on the resolving page. Complainant alleges that Respondent attracts visitors to its webpage by using a confusingly similar domain name to Complainant’s BANK OF AMERICA mark. The panel in LEGO Juris A/S v. LogoFusion, D2006-0270 (WIPO Apr. 19, 2006), held that the respondent’s resolving websites contained advertisements that appeared to attract Internet users by creating a likelihood of confusion with the complainant’s mark, resulting in commercial gain for the respondent, and determined such use to demonstrate the respondent’s bad faith registration and use. The panel in Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007), stated that the respondent used the disputed domain name to host advertisements from car dealerships that competed with the complainant’s business and were likely to lead to confusion as to the sponsorship of the competing dealerships, which provided evidence of bad faith registration and use. The Panel finds that, by attracting Internet traffic to the resolving web page, Respondent causes the likelihood of visitor confusion which presumably results in Respondent’s financial profit. Thus, the Panel finds that Respondent’s registration and use of the <bankofamericareo.net> domain name was and is in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel concludes that the content displayed on the resolving website, which uses Complainant’s entire BANK OF AMERICA mark, as well as advertisements for services similar to those offered by Complainant, demonstrates that Respondent had actual notice of Complainant’s mark. Consequently, the Panel finds that actual notice serves to demonstrate that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel finds Complainant has satisfied 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 <bankofamericareo.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 22, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page