Bank of America Corporation v. David Campbell / The Campbell Group
Claim Number: FA1205001444753
Complainant is Bank of America Corporation (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is David Campbell / The Campbell Group (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofamericareo.org>, registered with Wild West Domains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, 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 21, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <bankofamericareo.org> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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.org. Also on May 21, 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 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is one of the world's largest financial institutions. It operates approximately 5,700 banking centers in all 50 states, the District of Columbia, and more than 40 foreign countries. Complainant and its predecessors in interest have used the BANK OF AMERICA Marks since at least as early as 1928. Bank of America owns trademark registrations in the United States and throughout the world for the BANK OF AMERICA Marks for use with various financial services. In addition, Complainant owns the domain name bankofamerica.com and uses this domain name to promote its services and provide related financial information to visitors. For example, visitors to Complainant's web site can view information related to purchasing real estate, including locating and purchasing foreclosed properties owned by Complainant.
Complainant has rights in the BANK OF AMERICA mark and has registered its BANK OF AMERICA mark multiple times with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 853,860 registered July 30, 1968).
Respondent’s <bankofamericareo.org> domain name is confusingly similar to the BANK OF AMERICA mark.
Respondent lacks rights and legitimate interests in the <bankofamericareo.org> domain name.
The <bankofamericareo.org> domain name resolves to the website advertising and promoting Respondent’s real estate agency and brokerage services.
Respondent’s registration and use of the <bankofamericareo.org> domain name is meant to attract Internet users to the website for commercial gain by creating confusion as to the source of the <bankofamericareo.org> domain name.
Respondent had constructive notice of Complainant’s rights in the BANK OF AMERICA mark prior to its registration of the <bankofamericareo.org> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, rights in its BANK OF AMERICA mark at all times relevant to this proceeding.
Respondent registered the at-issue domain name on or about December 16, 2009.
At the time the at-issue domain name was registered, Respondent had actual knowledge of Complainant’s rights in the BANK OF AMERICA mark.
Respondent is not authorized to use Complainant’s mark in any capacity.
The <bankofamericareo.org> domain name has referenced a website advertising and promoting Respondent’s real estate agency and brokerage services.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant's registration of its mark with a national authority is sufficient to establish that Complainant has trademark rights for purposes of 4(a)(i) of the Policy. See Bank of Am Corp. v. Whois Privacy Prot. Serv. Inc., FA 604717 (NAF Jan. 27, 2006) (U.S. trademark registrations were sufficient to establish rights in complainant's trademarks).
To form the at-issue domain name Respondent merely deletes the spaces, adds the letters/term “reo” and then appends the generic top-level domain “.org” to Complainant’s trademark. Respondent’s trademark is nevertheless the dominant feature of the domain name. The term “reo” is an acronym meaning “real estate owned” and relates to the banking and mortgage industry. Respondent’s addition of this terse descriptive term suggestive of Complainant’s services fails to distinguish the <bankofamericareo.org> domain name from Complainant’s BANK OF AMERICA trademark. The deleted spaces are immaterial since spaces are disallowed in domain names and their removal does not change the sound or meaning of the trademark. Similarly, the addition of the necessary top level domain name does nothing to distinguish the at-issue domain name from Complainant’s trademark. Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s trademark mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); 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. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”)..
Respondent lacks rights and legitimate interests in respect of the <bankofamericareo.org> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
There is nothing in the record which suggests that the Respondent is commonly known by the <bankofamericareo.org> domain name. Respondent has no connection to or affiliation with Complainant and does not have Complainant’s permission to use its BANK OF AMERICA mark. Moreover, relevant WHOIS information for the <bankofamericareo.org> domain name lists “David Campbell / The Campbell Group” as the domain name registrant. The foregoing shows that Respondent is not commonly known by the <bankofamericareo.org> domain name pursuant to 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).
Respondent’s <bankofamericareo.org> domain name redirects (or has redirected) Internet users to Respondent’s business website located at <davidcampbell2.point2agent.com>, where real estate agency and brokerage services are offered. The website is concerned with locating and purchasing bank-owned and foreclosed property in Florida. Since Complainant offers information and services related to purchasing real estate, including the location and purchase of foreclosed properties owned by Complainant, the website competes with Complainant. Respondent presumably benefits commercially from its use of the at-issue domain name by attracting Internet users to Respondent’s real estate services website. These circumstances show that Respondent’s use of the <bankofamericareo.org> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (finding that the respondent’s offering competing services to those of the complainant would have been legitimate had respondent not incorporated complainant’s trademark in a confusingly similar domain name to accomplish its business goals).
Given Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
As mentioned elsewhere, the at-issue domain name references a website where Respondent offers real estate brokerage and agency services. Such use of the at-issue domain name likely results in Respondent obtaining customers and being paid for its services. These circumstances show that Respondent registered and is using the <bankofamericareo.org> domain name in bad faith since they make clear that Respondent intended to take commercial advantage of the confusion between the domain name and Complainant’s mark pursuant to Policy ¶ 4(b)(iv). See 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).
In light of Complainant’s extensive list of trademark registrations, the notoriety of the BANK OF AMERICA mark and the manner in which Respondent has used Complainant’s mark, the Panel concludes that Respondent must have had knowledge of Complainant's rights in the BANK OF AMERICA mark at the time he registered <bankofamericareo.org>. Respondent’s registration of a domain name containing Complainant’s registered trademark, with actual knowledge of such trademark, further evidences bad faith under the Policy. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
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.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M DeCicco, Panelist
Dated: June 19, 2012
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