Bank of America Corporation v. Nathan Joseph / Mainstream Advertising, Inc.
Claim Number: FA1304001493995
Complainant is Bank of America Corporation (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is Nathan Joseph / Mainstream Advertising, Inc. (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bakofamerica.com>, registered with Moniker Online Services, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2013; the National Arbitration Forum received payment on April 9, 2013.
On April 18, 2013, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <bakofamerica.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 April 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2013 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@bakofamerica.com. Also on April 19, 2013, 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 May 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions
1. Complainant, Bank of America Corporation, is one of the world’s largest financial institutions.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BANK OF AMERICA mark (e.g., Reg. No. 853,860, registered July 30, 1968).
3. Respondent’s domain name is confusingly similar to Complainant’s trademarks as the <bakofamerica.com> domain name constitutes a common misspelling of Complainant’s BANK OF AMERICA trademark.
4. Respondent has no rights or legitimate interests in the domain name.
i. Respondent is not known by the name “Bak of America.”
ii. Respondent uses the domain name to operate a link farm for financial services.
5. Respondent has registered and is using the domain name in bad faith.
i. Respondent uses the domain name to display links that resolve to third-party websites, including third-party financial service providers that compete with Complainant.
ii. Respondent presumably receives click-through advertising fees through operation of the link farm.
iii. Respondent had constructive knowledge of Complainant’s trademarks prior to registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is one of the world’s largest financial institutions and provides a wide range of banking and related services.
2. Complainant owns numerous registrations of trademarks for BANK OF AMERICA, including the trademark registration with USPTO for the BANK OF AMERICA mark (e.g., Reg. No. 853,860, registered July 30, 1968).
3. The disputed Domain Name was registered on March 26, 2001.
4. The Domain Name is being used in connection with a link farm for
financial services and some of the links resolve to third-party financial service providers, including some that compete with Complainant.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it is one of the world’s largest financial institutions. Complainant argues that it is the owner of trademark registrations with the USPTO for the BANK OF AMERICA mark (e.g., Reg. No. 853,860, registered July 30, 1968). See Complainant’s Exhibit 4. The Panel notes that Respondent appears to reside within the United States. Therefore, the Panel finds that Complainant’s registration of the BANK OF AMERICA mark with the USPTO sufficiently evidences its rights in the mark under Policy ¶ 4(a)(i). See 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 next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BANK OF AMERICA mark. Complainant argues that Respondent’s domain name is confusingly similar to Complainant’s trademark as the <bakofamerica.com> domain name constitutes a common misspelling of Complainant’s BANK OF AMERICA trademark. Complainant claims that Respondent merely deleted the letter “n” in the word “bank.” The Panel holds that Respondent’s removal of a letter does not differentiate Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Complainant asserts that Respondent’s domain name contains the “.com” top-level domain name. The Panel also finds that the addition of a generic top-level domain (“gTLD”) to a disputed domain name is inconsequential to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel determines that Respondent’s <bakofamerica.com> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BANK OF AMERICA trademark and to use it in its domain name , making only a slight spelling alteration, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then used the disputed domain name in connection with a link farm for financial services, with some of the links resolving to third-party financial service providers, including some that compete with Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent is not known by the name “Bak of America.” Complainant argues that Respondent has no connection or affiliation with Complainant and Complainant has not consented to or licensed Respondent’s use of the domain name. Complainant contends that the WHOIS records for the domain name shows that the true registrant of the domain name is “Nathan Joseph, Mainstream Advertising, Inc.” See Complainant’s Exhibit 8. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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);
(e) Complainant argues that Respondent uses the domain name to operate a link farm for financial services. The Panel notes that Respondent’s disputed domain name resolves to a website featuring competing hyperlinks titled “$150 Banking Reward,” “SunTrust Bank,” “EverBank Online Checking,” and others. See Complainant’s Exhibit 9. Complainant claims that Respondent presumably commercially benefits from these links through the receipt of “click-through” fees. The Panel determines that Respondent’s use of the disputed domain name to host a link farm is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent uses the domain name to display links that resolve to third-party websites, including third-party financial service providers that compete with Complainant. The Panel notes that Respondent’s disputed domain name resolves to a website featuring competing hyperlinks titled “$150 Banking Reward,” “SunTrust Bank,” “EverBank Online Checking,” and others. See Complainant’s Exhibit 9. The Panel holds that Respondent’s use of the disputed domain name to host a competing hyperlink directory disrupts Complainant’s business, showing bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant contends that Respondent presumably receives click-through advertising fees through operation of the link farm. Complainant argues that Respondent’s use of a domain name in connection with a fee-producing link farm for financial services is an attempt to create confusion and benefit from the goodwill of Complainant’s marks. The Panel notes that Respondent’s disputed domain name resolves to a website featuring competing hyperlinks titled “$150 Banking Reward,” “SunTrust Bank,” “EverBank Online Checking,” and others. See Complainant’s Exhibit 9. The Panel finds that Respondent’s use of the disputed domain name to host a link farm demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Thirdly, Complainant asserts that Respondent had constructive knowledge of Complainant’s trademarks prior to registration of the domain name. Complainant claims that its trademark registrations serve as constructive notice of its rights in the BANK OF AMERICA mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BANK OF AMERICA mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the second of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bakofamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 29, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page