Bank of America Corporation v. BNI Inc.
Claim Number: FA0809001225089
Complainant is Bank of America Corporation (“Complainant”), represented by Melissa
G. Ferrario, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bankofamericahomeequityloans.com>, registered with Wild West Domains, 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 19, 2008.
On September 18, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <bankofamericahomeequityloans.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 14, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bankofamericahomeequityloans.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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." 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 makes the following assertions:
1. Respondent’s <bankofamericahomeequityloans.com> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <bankofamericahomeequityloans.com> domain name.
3. Respondent registered and used the <bankofamericahomeequityloans.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a banking and financial services company that markets its services, including home equity loans, under the BANK OF AMERICA mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on July 30, 1968 (Reg. No. 853,860). Complainant has used the BANK OF AMERICA mark continuously in commerce to market its services since at least as early as 1928. Complainant is the second largest banking company in the world, with offices and clients in at least 150 countries.
Respondent registered the <bankofamericahomeequityloans.com> domain name on January 8, 2005. The disputed domain name resolves to a website that contains a search engine and links to third-party websites offering services that compete with Complainant’s business.
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."
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.”).
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.
The Panel finds that Complainant has established rights in
the BANK OF AMERICA mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive.").
Complainant contends that
Respondent’s <bankofamericahomeequityloans.com> domain name is confusingly similar to its BANK OF
AMERICA mark.
The <bankofamericahomeequityloans.com> domain name differs from Complainant’s mark in three ways:
(1) the spaces between the words have been removed; (2) the terms “home equity
loans,” which are descriptive of certain financial services that Complainant
offers, have been added to the end of the mark; and (3) the generic top-level
domain (“gTLD”) “.com” has been added. Neither
the deletion of spaces nor the addition of descriptive terms sufficiently
distinguish a domain name from an incorporated mark for the purposes of Policy
¶ 4(a)(i). Additionally, the addition of
a generic top-level domain does not distinguish a domain from a mark, as every
domain name must contain a TLD. Therefore,
the Panel finds that these changes do not minimize or eliminate the resulting
likelihood of confusion, and so Respondent’s disputed domain name is not
sufficiently distinguished from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name
<mannbrothers.com> confusingly similar to the complainant’s MANN BROTHERS
mark “so as to likely confuse Internet users who may believe they are doing
business with Complainant or with an entity whose services are endorsed by,
sponsored by, or affiliated with Complainant; hence, satisfying the confusing
similarity requirement”); see also Am. Online, Inc. v. Anytime Online Traffic Sch.,
FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain
names, which incorporated the
complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity); see also Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <bankofamericahomeequityloans.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant contends that Respondent is not commonly known
by the <bankofamericahomeequityloans.com>
domain name nor has it ever been the owner or licensee of the BANK OF AMERICA
mark. The WHOIS record for the disputed
domain name lists Respondent as “BNI Inc.”
Because Respondent is not known as any variant on the BANK OF AMERICA
mark and has also failed to show any evidence contrary to Complainant’s
contentions, the Panel therefore finds that Respondent is not commonly known by
the <bankofamericahomeequityloans.com>
domain name pursuant to
Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v.
Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that
the respondent has no rights or legitimate interests in domain names because it
is not commonly known by the complainant’s marks and the respondent has not
used the domain names in connection with a bona fide offering of goods
and services or for a legitimate noncommercial or fair use); 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").
Respondent maintains a website at the <bankofamericahomeequityloans.com> domain name that features links to third-party websites offering services that compete with Complainant’s business. Complainant contends that Respondent commercially benefits from these links through the receipt of “click-through” fees. The Panel finds that Respondent does commercially benefit from this use of the <bankofamericahomeequityloans.com> domain name, and that this use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that because of Respondent’s inclusion of Complainant’s BANK OF AMERICA mark in the disputed domain name, Internet customers looking for Complainant’s website are diverted to Respondent’s website at the disputed domain name. Complainant also contends that Respondent intended to disrupt Complainant’s business by diverting confused customers to Complainant’s competitors. The Panel finds that Respondent’s intentional disruption of Complainant’s business is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Complainant also contends that the click-through fees that
Respondent receives from the third-party advertisements allow Respondent to
gain commercially from this diversion.
The Panel finds that this is an intentional use of the disputed domain
name for commercial gain through a likelihood of confusion with Complainant’s
mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of
Respondent’s registration and use in bad faith.
See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of
the infringing domain name to intentionally attempt to attract Internet users
to its fraudulent website by using the complainant’s famous marks and likeness).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamericahomeequityloans.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 29, 2008
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