Bank of America Corporation v. Jason Briggs / Modify Law
Claim Number: FA1302001487021
Complainant is Bank of America Corporation (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is Jason Briggs / Modify Law (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofamericamodification.us>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2013; the National Arbitration Forum received a hard copy of the Complaint on February 28, 2013.
On February 27, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bankofamericamodification.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 4, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules ”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, usDRP 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 makes the following assertions:
1. Respondent’s <bankofamericamodification.us> domain name, the domain name at issue, is confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 mark since at least as early as 1928. Complainant holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) in the BANK OF AMERICA mark (e.g. Reg. No. 853,860 registered July 30, 1968).
Respondent registered the <bankofamericanmodification.us> domain name on February 9, 2012. The disputed domain name contains Complainant’s mark in its entirety, with only the addition of the descriptive word “modification.” The addition of the country code top-level domain (“ccTLD”) “.us” does not keep it from being confusingly similar to Complainant’s mark. Respondent does not own a trademark or service mark that is identical to the domain name. Respondent is not commonly known by the disputed domain name, based on the WHOIS records and the fact that Complainant has not authorized Respondent to use its mark. Respondent is merely using the disputed domain name to display links that generate “click-through” revenue. Respondent is using the disputed domain name to attract internet users to its parked website for commercial gain. Respondent had at least constructive knowledge of Complainant’s trademarks prior to registration.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision .
Complainant owns rights to the BANK OF AMERICA trademark and service mark pursuant to its registrations of the mark with the USPTO (e.g. Reg. No. 853,860 registered July 30, 1968) for use with various financial services. Registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). Accordingly, Complainant has rights in the BANK OF AMERICA mark for the purposes of Policy ¶ 4(a)(i). See Reliant Techs., Inc. v. Jones, FA 1124524 (Nat. Arb. Forum Feb. 19, 2008) (finding that, as the complainant had registered its FRAXEL mark with the USPTO, the complainant had established rights to the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <bankofamericamodification.us> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark. The disputed domain name contains Complainant’s mark in its entirety, with the addition of the descriptive word “modification” (loan modifications are one aspect of Complainant’s business). The Panel finds that the addition of a descriptive word is not sufficient to distinguish a domain name from a complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under [UDRP] Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The addition of a ccTLD such as “.us,” as well as the elimination of spaces between words in a mark, have been found to be irrelevant in a confusing similarity comparison. Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a … 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.”). Accordingly, the <bankofamericamodification.us> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent does not own a trademark or service mark identical to the <bankofamericamodification.us> domain name. In the absence of evidence of trademark registrations, a respondent cannot establish rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore the Panel finds that Respondent does not own a trademark in the disputed domain name and has not established rights or legitimate interests under Policy ¶ 4(c)(i).
Respondent is not commonly known by the disputed domain name, and has not established rights under Policy ¶ 4(c)(iii). The WHOIS record for the <bandofamericamodification.us> domain name lists “Jason Briggs / Modify Law” as the registrant, and Complainant has not authorized Respondent to use its BANK OF AMERICA mark. A lack of authorization and nominally unsupportive WHOIS information is strong evidence that a respondent is not commonly known by a domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Accordingly, the Panel finds that Respondent has not been commonly known by the disputed domain name and has not established rights or legitimate interests under Policy ¶ 4(c)(iii).
Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(ii) or 4(c)(iv) of the usTLD. The disputed domain name resolves to a “parked” web page that displays links that generate “click-through revenue” for Respondent. Past panels have found that such a display of links does not demonstrate a bona fide offering or a legitimate use. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the UDRP Policy). Respondent uses the disputed domain name for e-mail purposes (particularly xxxxx@bankofamericamodification.us). Past panels have not found the use of a domain name as an e-mail address to be sufficient to establish a bona fide use. See Alienware Corp. v. Dean, FA 1290045 (Nat. Arb. Forum Dec. 28, 2009) (holding that “If the use of the disputed domain name by itself as an email address for the Respondent amounted to bona fide use, UDRP Policy would become easily avoidable.”). Therefore, Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use, and has not established rights or legitimate interests under Policy ¶¶ 4(c)(ii) or 4(c)(iv).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is intentionally attempting to attract consumers to its website for commercial gain by creating confusion with Complainant’s mark. Respondent generates click-through revenue with the links displayed at the disputed domain name’s resolving web page. The use of links in this manner to be evidence of bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under UDRP Policy ¶ 4(b)(iv)). Therefore, Respondent registered or is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent must have had constructive and/or actual notice of Complainant's rights in the BANK OF AMERICA mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamericamodification.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 13, 2013
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