Bank of America Corporation v. [REDACTED]
Claim Number: FA1409001578791
Complainant is Bank of America Corporation (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is [REDACTED] (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <service-bankofamerica.com>, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2014; the National Arbitration Forum received payment on September 9, 2014.
On September 10, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <service-bankofamerica.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2014 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@service-bankofamerica.com. Also on September 11, 2014, 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.
A timely Response was received and determined to be complete on October 1, 2014.
An Additional Submission from Complainant was received on October 3, 2014.
On October 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Preliminary Issue: Redaction of Respondent’s Identity
Respondent contends that she has been the victim of identity theft. Specifically, Respondent claims she did not request this domain name, but that instead someone fraudulently used her name and address when filing for the <service-bankofamerica.com> domain name. Complainant agrees with Respondent’s claim stating that the true registrant of the domain name fraudulently used the name and address of Respondent to register the domain name. The Panel finds Respondent is a victim of identity theft, and will redact Respondent’s personal information from the decision to prevent the further victimization of Respondent. In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents. See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007). According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” Consequently, the Panel determines the circumstances of the present case, including the claim of identity theft by Respondent, warrant the redaction of Respondent’s personal information from the Panel’s decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant owns the BANK OF AMERICA mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 853,860 registered July 30, 1968). Complainant uses the BANK OF AMERICA mark for banking and financial services. The <service-bankofamerica.com> domain name is confusingly similar to the BANK OF AMERICA mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as <service-bankofamerica.com> or any variant thereof. Respondent makes no active use of the disputed domain name. The domain name merely resolves to an error message.
Respondent has engaged in bad faith as the full use of the BANK OF AMERICA mark in the disputed domain name evinces at least constructive knowledge, and Respondent has failed to make any active use of the disputed domain name.
Respondent
Respondent asserts that she is the victim of identity theft as someone fraudulently used her name and address to register the <service-bankofamerica.com> domain name.
Additional Submission from Complainant
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
Complainant uses the BANK OF AMERICA mark for banking and financial services. Complainant claims rights in the BANK OF AMERICA mark through trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 853,860 registered July 30, 1968). The Panel finds that Complainant’s USPTO registrations for the BANK OF AMERICA mark evince Complainant’s rights in the mark under Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant argues the <service-bankofamerica.com> domain name is confusingly similar to the BANK OF AMERICA mark. Complainant notes the domain name fully incorporates the BANK OF AMERICA mark less the spacing, and adding the term “service,” a hyphen, and the generic top-level domain (“gTLD”) “.com.” Prior panels have found confusing similarity in similar scenarios. Notably, in Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013), the panel found the disputed domain name confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD. Accordingly, the Panel determines that such alterations are inadequate to distinguish the resulting name from the incorporated mark, and therefore finds the <service-bankofamerica.com> domain name is confusingly similar to the BANK OF AMERICA mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant explains that once the privacy shield was lifted, the WHOIS record identified Respondent as registrant. Accordingly, Complainant maintains that Respondent is not commonly known as <service-bankofamerica.com> or any variant thereof. The Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that no active use is made of the disputed domain name. Complainant claims that the domain name merely resolves to an error message. Past panels have found inactive use of a confusingly similar domain name does not constitute a Policy ¶ 4(c)(i) bona fide offering, nor does it fall within the protections of Policy ¶ 4(c)(iii). The panel in George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) found that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name. As Complainant has provided evidence that the <service-bankofamerica.com> domain name does not resolve to an active website, the Panel finds Respondent lacks rights in disputed domain name pursuant to Policy ¶ 4(c)(i) and (iii).
Complainant has proven this element.
Complainant argues that the failure to connect the disputed domain name with an active website evinces bad faith. Past panels have found bad faith where the respondent has failed to make an active use. In Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel concluded that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith. Similarly here, the Panel concludes that the non-use of the <service-bankofamerica.com> domain name since its creation in May 2014 amounts to Policy ¶ 4(a)(iii) bad faith.
Complainant submits that the unknown registrant’s unauthorized use of the name and contact information of Respondent is also further evidence of bad faith pursuant to the paragraph 4(a)(iii) of the Policy. This exact scenario was addressed in Morgan Stanley v. John Doe, FA 1456105 (NAF Oct. 4, 2012). In that case, an unknown registrant used the respondent’s contact information to register a domain name that was identical to the complaint’s trademark.
The panel in that case determined that the named respondent was essentially the victim of identity theft by the unknown registrant, and found that the identity theft was evidence that the actual registrant of the disputed domain name registered and used the domain name in bad faith. Complainant states that the unknown registrant in the instant case has likewise stolen the identity of the Respondent, and this constitutes additional evidence of bad faith. The Panel finds that registrant’s use of a false identity is evidence of bad faith pursuant to Policy ¶ 4(a)(iii) and finds the disputed domain name has been registered and is being used in bad faith.
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <service-bankofamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 9, 2014
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