Bank of America Corporation v. Helen Oily
Claim Number: FA1403001550613
Complainant is Bank of America Corporation (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is Helen Oily (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofamericagroup.us>, registered with Domain.com, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2014; the National Arbitration Forum received a hard copy of the Complaint on March 25, 2014.
On March 25, 2014, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bankofamericagroup.us> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 26, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 2014 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 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 name be transferred from Respondent to Complainant.
Complainant
a) Complainant owns the BANK OF AMERICA mark for banking and financial services and owns numerous trademark registrations for this mark in the United States and throughout the world. Complainant owns the United States Patent and Trademark Office (“USPTO”) registration for the BANK OF AMERICA mark (e.g., Reg. No. 853,860 registered Jul. 30, 1968). Complainant also owns the registration with the United Kingdom Industrial Property Office (“UKIPO”) for the BANK OF AMERICA mark (Reg. No. 2,178,103 registered Apr. 6, 2001).
b) The <bankofamericagroup.us> domain name consists entirely of Complainant’s BANK OF AMERICA mark plus the generic term “group.”
c) Respondent is not known by the <bankofamericagroup.us> domain name. Respondent has no connection or affiliation with Complainant and Complainant has not consented to or licensed Respondent’s use of the BANK OF AMERICA mark in the <bankofamericagroup.us> domain name. The WHOIS record lists “Helen Oily” as the domain name registrant.
d) The <bankofamericagroup.us> domain name resolves to a website that is being used as a link farm, which prominently displays search terms related to business and financial services. Respondent must receive click-through revenue when Internet users visit the disputed domain name and click on the advertising links.
e) Respondent uses the e-mail addresses from the <bankofamericagroup.us> domain name to attempt to pass off as Complainant to send e-mails to Complainant’s customers while presenting to be the assistant of a member of Complainant’s Board of Directors, Charles K. Gifford.
f) Respondent’s use of the <bankofamericagroup.us> domain name e-mail addresses and deception as to the sender of these e-mails is meant to allow Respondent to phish for the financial information of unsuspecting Internet users.
g) Respondent’s registration and use of the <bankofamericagroup.us> domain name was intended to disrupt Complainant’s business.
h) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. The disputed domain name displays links to competitors of Complainant’s under headings such as “Bad Credit Fix,” “Financial Planning,” and “Morgan Stanley.”
i) Respondent’s use of the domain name to send e-mails that purport to be from the assistant of one of Complainant’s Board of Director members demonstrates a bad faith attempt to pass off as Complainant.
j) Respondent registered and is using the <bankofamericagroup.us> domain name to phish for the financial information of Complainant’s consumers.
k) Respondent had constructive knowledge of Complainant’s rights in the BANK OF AMERICA mark as a result of Complainant having registered the mark with federal trademark authorities around the world. Furthermore, since Complainant is one of the world’s largest financial institutions Respondent must have had actual knowledge of Complainant’s rights in the mark as well.
Respondent
a) Respondent did not submit a Response.
1. Respondent’s <bankofamericagroup.us> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <bankofamericagroup.us> domain name.
3. Respondent registered or used the <bankofamericagroup.us> domain name in bad faith.
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.”).
Given the similarity between the Uniform Domain Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant asserts that it owns the BANK OF AMERICA mark for banking and financial services and owns numerous trademark registrations for this mark in the United States and throughout the world. Complainant states that it owns the USPTO registration for the BANK OF AMERICA mark (e.g., Reg. No. 853,860 registered Jul. 30, 1968). Complainant also claims to own the registration with the UKIPO for the BANK OF AMERICA mark (Reg. No. 2,178,103 registered Apr. 6, 2001). Panels have found that registration of a mark is satisfactory evidence of having rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Therefore, the Panel finds that Complainant has rights in the BANK OF AMERICA mark under Policy ¶ 4(a)(i).
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark. Complainant notes that the <bankofamericagroup.us> domain name consists entirely of Complainant’s BANK OF AMERICA mark plus the generic term “group.” The Panel notes that Respondent also eliminates spacing in the mark and adds the country-code top-level domain (“ccTLD”) “.us.” Panels have found that the removal of spaces along with the addition of a generic term and a ccTLD is insufficient to negate a finding of confusing similarity. See Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com> domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC mark). See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”). Therefore, the Panel finds that Respondent’s <bankofamericagroup.us> domain name is confusingly similar to the BANK OF AMERICA mark under Policy ¶ 4(a)(i).
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 notes that there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <bankofamericagroup.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant asserts that Respondent is not known by the <bankofamericagroup.us> domain name. According to Complainant, Respondent has no connection or affiliation with Complainant and Complainant has not consented to or licensed Respondent’s use of the BANK OF AMERICA mark in the <bankofamericagroup.us> domain name. Additionally, Complainant notes that the WHOIS record lists “Helen Oily” as the domain name registrant, and claims that these factors demonstrate that Respondent is not commonly known by the <bankofamericagroup.us> domain name. The Panel agrees and find that, pursuant to Policy ¶ 4(c)(iii), Respondent is not commonly known by the <bankofamericagroup.us> domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the domain name).
Complainant next alleges that the <bankofamericagroup.us> domain name resolves to a website that is being used as a link farm, which prominently displays search terms related to business and financial services. Complainant argues that Respondent must receive click-through revenue when Internet users visit the disputed domain name and click on the advertising links. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <bankofamericagroup.us> domain name to host competitive links to third parties is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
Complainant notes that Respondent uses the e-mail addresses from the <bankofamericagroup.us> domain name to attempt to pass off as Complainant to send e-mails to Complainant’s customers while presenting to be the assistant of a member of Complainant’s Board of Directors, Charles K. Gifford. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name. Similarly, the Panel finds that Respondent’s attempt to pass off as Complainant is evidence of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s use of the <bankofamericagroup.us> domain name e-mail addresses and deception as to the sender of these e-mails is meant to allow Respondent to phish for the financial information of unsuspecting Internet users. Panels have found that the use of a domain name to fraudulently acquire personal and financial information is evidence of a lack of rights and legitimate interests. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to UDRP ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent has neither rights nor legitimate interests in the <bankofamericagroup.us> domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s registration and use of the <bankofamericagroup.us> domain name was intended to disrupt Complainant’s business. The <bankofamericagroup.us> domain name displays links to Complainant’s competitors. The panel in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), concluded 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 UDRP ¶ 4(b)(iii). Therefore, the Panel finds that Respondent’s registration and use of the <bankofamericagroup.us> domain name is disruptive pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant reiterates that the disputed domain name displays links to competitors of Complainant’s under headings such as “Bad Credit Fix,” “Financial Planning,” and “Morgan Stanley.” The Panel infers that Respondent commercially benefits from this use, and thus the Panel finds bad faith in accordance with 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).
Complainant argues that Respondent’s use of the domain name to send e-mails that purport to be from the assistant of one of Complainant’s Board of Director members demonstrates a bad faith attempt to pass off as Complainant. In Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001), the panel found that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith. Similarly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent registered and is using the <bankofamericagroup.us> domain name to phish for the financial information of Complainant’s consumers. Panels have found that the use of a domain name to phish for personal or financial information is evidence of bad faith registration and use. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Thus, the Panel finds that Respondent registered and is using the <bankofamericagroup.us> domain name in bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant asserts that Respondent had constructive knowledge of Complainant’s rights in the BANK OF AMERICA mark as a result of Complainant having registered the mark with federal trademark authorities around the world. Furthermore, Complainant argues that since it is one of the world’s largest financial institutions Respondent must have had actual knowledge of Complainant’s rights in the mark as well. 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 UDRP."); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamericagroup.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 7, 2014
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