Bank of America Corporation v. Out Island
Properties, Inc.
Claim
Number: FA0304000154531
Complainant is
Bank of America Corporation, Charlotte, NC (“Complainant”) represented
by Larry C. Jones of Alston & Bird LLP. Respondent is Out Island
Properties, Inc., South Miami, FL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <bancamericaairports.com>,
<airportbankamerica.com>, <airportbancamerica.com>, and
<bankamericaportal.com>, registered with Tucows, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 14, 2003; the Forum received a hard copy of the
Complaint on April 17, 2003.
On
April 15, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
names <bancamericaairports.com>, <airportbankamerica.com>,
<airportbancamerica.com>, and <bankamericaportal.com>
are registered with Tucows, Inc. and that Respondent is the current registrant
of the names. Tucows, Inc. verified that Respondent is bound by the Tucows,
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
April 23, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 13, 2003, 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@bancamericaairports.com, postmaster@airportbankamerica.com,
postmaster@airportbancamerica.com, and postmaster@bankamericaportal.com by
e-mail.
Having
received no timely Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default. Then, on May 21, 2002, Respondent by email letter set out a short
paragraph explaining its position and sought 10 days for further response. The Panel is not aware that Respondent
supplemented this email request before the due date for the Decision and the
Panel has no basis for extending deadlines.
On
May 20, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names registered by
Respondent, <bancamericaairports.com>, <airportbankamerica.com>,
<airportbancamerica.com>, and <bankamericaportal.com>,
are confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent has no rights or legitimate
interests in the <bancamericaairports.com>, <airportbankamerica.com>,
<airportbancamerica.com>, and <bankamericaportal.com> domain
names.
3. Respondent registered and used the <bancamericaairports.com>,
<airportbankamerica.com>, <airportbancamerica.com>, and
<bankamericaportal.com> domain names in bad faith.
B. Respondent failed to submit a timely
Response in this proceeding and Respondent’s email letter does not qualify as a
Response.
Complainant,
Bank of America Corporation, was formed from a series of mergers in 1998 when a
successor of NationsBank Corporation merged with BankAmerica Corporation. The resulting entity was named BankAmerica
Corporation until April 28, 1999, when the name changed to Bank of America
Corporation. Complainant is the largest
consumer bank in the United States and Complainant’s predecessor, BankAmerica
Corporation, was one of the best-known financial institutions at the time of
the 1998 merger. Prior to 1998,
BankAmerica Corp. provided a wide range of banking and financial services, and
promoted and advertised its services through the service marks and trade names
BANKAMERICA and BANCAMERICA.
Complainant owns
rights in the BANKAMERICA and BANCAMERICA marks through its service mark
registrations with the United States Patent and Trademark Office (U.S. Reg.
Nos. 965,288 and 2,134,374).
Complainant now owns interests in the BANKAMERICA and BANCAMERICA marks
through the merger.
Complainant owns
the registrations for the <bankamerica.com> and <bancamerica.com>
domain names. Complainant uses both
domain names to direct Internet traffic to its <bankofamerica.com>
website, where Complainant promotes its wide variety of financial
services.
Complainant’s
services and its predecessor’s services have been advertised worldwide through
the BANKAMERICA and BANCAMERICA marks in various forms of media. Complainant spends tens of millions of
dollars annually in promoting financial services offered under its various
trademarks and service marks, including the BANKAMERICA and BANCAMERICA marks. As a result, Complainant’s financial
services have become readily identifiable with the BANKAMERICA and BANCAMERICA
marks.
Respondent
registered the <bancamericaairports.com>,
<airportbankamerica.com>, <airportbancamerica.com>, and
<bankamericaportal.com> domain names on June 6, 2000. All the domain names are used to direct
Internet traffic to a search engine website.
The resulting search engine website contains links to providers of a
variety of goods and services, including financial and travel services. In addition, Internet users are subjected to
pop-up advertisements when they reach the search engine website.
On December 17,
2002, and January 15, 2003, Complainant contacted Respondent requesting that
its use of the <bancamericaairports.com>,
<airportbankamerica.com> and <airportbancamerica.com> domain
names cease and desist and that the domain name registrations be transferred to
Complainant. Complainant later learned
that Respondent also registered the <bankamericaportal.com> domain
name. Respondent never replied to
Complainant’s correspondence and continues to use the disputed domain names to
link to a search engine website.
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 will draw such
inferences as the Panel considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
established in this proceeding that it has rights in the BANCAMERICA and
BANKAMERICA marks through proof of trademark registration with the U.S. Patent
and Trademark Office.
The domain names
registered by Respondent, <bancamericaairports.com> and <airportbancamerica.com>,
are confusingly similar to Complainant’s BANCAMERICA mark. The addition of the word “airport[s]” to
Complainant’s distinct BANCAMERICA mark does not detract from the source
identifying quality of said mark in the domain name. Alternatively stated, the addition of the generic word
“airport[s]” to the BANCAMERICA mark does not create a new distinct mark
capable of overcoming a finding of confusing similarity. Because the BANCAMERICA mark remains the
dominant feature of the <bancamericaairports.com> and <airportbancamerica.com>
domain names, the Panel finds the domain names to be confusingly similar to
said mark. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also PG&E Corp. v. Anderson, D2000-1264
(WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common
descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’,
create new or different marks in which it has rights or legitimate interests,
nor does it alter the underlying PG&E mark held by Complainant”).
Likewise, the <airportbankamerica.com>
and <bankamericaportal.com> domain names are confusingly
similar to Complainant’s BANKAMERICA mark.
The use of the generic words “airport” and “portal” do not detract from
the dominating presence of the BANKAMERICA mark. Since the domain names predominantly feature Complainant’s
valuable BANKAMERICA trademark, the Panel finds that a likelihood of consumer
confusion exists.
The
Panel finds that Policy ¶ 4(a)(i) is satisfied.
Respondent
failed to submit a timely and adequate Response to the Complaint. The Complaint contains factual allegations
that Respondent has no rights or legitimate interests in the disputed domain
names that contain in their entirety Complainant’s well-known marks. In the absence of a Response, the Panel will
presume that Complainant’s assertions are true, unless clearly contradicted by
the evidence available to the Panel.
Therefore, the Panel presumes that Respondent has no rights or
legitimate interests in the disputed domain names. See Do the Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest
complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
In addition,
without a challenge put forward by Respondent, the Panel will draw all
reasonable inferences in Complainant’s favor. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Respondent uses
the disputed domain names to direct Internet traffic to a search engine
website. Since the resulting website
contains links to a variety of general subjects, the Panel infers that
Respondent profits from the traffic that is diverted to the search engine
website. The Panel also infers that
Respondent profits from the pop-up advertisements the consumer is inundated
with when reaching the resulting search engine website. Moreover, since the disputed domain names do
not logically reference a search engine website, the Panel infers that
Respondent purposefully uses Complainant’s BANKAMERICA and BANCAMERICA marks to
generate a profit. Respondent’s
commercial use of the disputed domain names does not constitute rights or
legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat.
Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the
domain names <faoscwartz.com>, <foaschwartz.com>,
<faoshwartz.com>, and <faoswartz.com> where Respondent was using
these domain names to link to an advertising website); see also Ziegenfelder Co. v. VMH
Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests based on the fact that the domain names bear no
relationship to the business of Respondent and that Respondent would only
legitimately choose to use Complainant’s mark in a domain name if Respondent
was seeking to create an impression that the two businesses were affiliated).
No evidence on
the record supports a finding that Respondent is commonly known by the disputed
domain names. The disputed domain names
predominantly display Complainant’s BANKAMERICA and BANCAMERICA marks and the
Panel finds that Respondent could not be commonly known by the domain names. Furthermore, all the domain names are
registered to Out Island Properties, Inc., and thus the Panel presumes that
Respondent is commonly known as Out Island Properties, Inc., and not by
Complainant’s famous marks. Therefore,
the Panel finds that Respondent has no rights or legitimate interests in the
disputed domain names under Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
Accordingly,
the Panel finds that Respondent has no rights or legitimate interests in the
disputed domain names; thus, Policy ¶ 4(a)(ii) is satisfied.
Complainant
alleges that Respondent acted in bad faith in registering and using domain names
containing Complainant’s marks. The
fact that Respondent registered four domain names containing two similar
versions of Complainant’s trademarks suggests that Respondent was aware of
Complainant’s interests in the incorporated marks. In addition, since the disputed domain names have no inherent
connection to the use of the search engine website, such evidence supports the
Panel’s inference that Respondent registered the disputed domain names to trade
on the goodwill associated with the BANKAMERICA and BANCAMERICA marks. Therefore, Respondent’s registration of the
disputed domain names, despite knowledge of Complainant’s interests in the
BANKAMERICA and BANCAMERICA marks, constitutes bad faith registration. See Entrepreneur Media, Inc. v.
Smith, 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
Furthermore,
Respondent’s use of the disputed domain names warrants a finding of bad faith
use. Respondent is capitalizing on the
goodwill of the BANKAMERICA and BANCAMERICA trademarks by diverting the
disputed domain names to a search engine website that contains pop-up
advertisements. Since the disputed
domain names contain entire versions of Complainant’s marks and are used for
something completely unrelated to their descriptive quality, a consumer
searching for Complainant would become confused as to Complainant’s affiliation
with the resulting search engine website.
Therefore, Respondent’s opportunistic use of the disputed domain names
represents bad faith use under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov.
22, 2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site to its own
website for commercial gain).
The Panel finds
that Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bancamericaairports.com>,
<airportbankamerica.com>, <airportbancamerica.com> and
<bankamericaportal.com> domain name be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 3, 2003.
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