Bank of America Corporation v. Reginald Benson II / Griar Group
Claim Number: FA1503001609261
Complainant is Bank of America Corporation (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is Reginald Benson II / Griar Group (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bofacredit.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she 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 Forum electronically March 12, 2015; the Forum received payment March 12, 2015.
On March 16, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bofacredit.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2015, 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@bofacredit.com. Also on March 17, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On, April 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 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’s Contentions in this Proceeding:
Complainant owns the BANK OF AMERICA mark, which it uses to identify its major financial institution that offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients. Complainant registered the BANK OF AMERICA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 853,860, registered July 30, 2011), which demonstrates its rights in the mark. Additionally, Complainant registered BOFA with the USPTO (e.g., Reg. No. 4,210,429, registered Sep. 18, 2012), which demonstrates rights in that mark as well. The <bofacredit.com> domain name is confusingly similar to the BANK OF AMERICA mark as the domain name simply incorporates a common abbreviation of the BANK OF AMERICA mark, the descriptive term “credit”, and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights to or legitimate interests in the <bofacredit.com> domain name. Respondent is not commonly known by the disputed domain name or any variant of BANK OF AMERICA, nor has Complainant assented to Respondent’s registration of the disputed domain name or any variant of the BANK OF AMERICA mark. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain names, nor a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactively held page displaying the error message “Service Unavailable.” See Compl., at Attached Ex. 12.
Respondent registered and used the disputed domain name in bad faith. Respondent attempted to sell the domain name to Complainant for $10,000.00, and intimated that it was willing to sell the disputed domain name to a third party for nearly $11,000.00 if Complainant did not agree to purchase the domain name from Respondent. See Compl., at Attached Ex. 13. Next, Complainant inactively held the disputed domain name as evidenced by Complainant’s Exhibit 12. Finally, Respondent had at least constructive knowledge of Complainant’s BANK OF AMERICA mark and its rights therein because Complainant’s trademark registrations serve as constructive notice of its rights in the BANK OF AMERICA and BOFA marks.
Respondent’s Contention in this proceeding:
Respondent did not submit a Response.
The Panel notes that Respondent registered the <bofacredit.com> domain name July 13, 2014.
FINDINGS:
Complainant established rights and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or disputed domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Because the Panel finds that Respondent knew of Complainant’s protected rights in the mark, based on the mark’s use in the disputed domain name and Respondent’s attempted sale of the disputed domain name to Complainant, Respondent registered and used the disputed 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 Complainant to 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.
Given 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. 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.”).
Identical or Confusingly Similar:
Complainant uses the BANK OF AMERICA mark to identify its major financial institution that offers a broad spectrum of financial products and services to consumers, small businesses and commercial clients. Complainant registered BANK OF AMERICA with the USPTO (e.g., Reg. No. 853,860, registered July 30, 2011), and such registration demonstrates its rights in the mark. The Panel agrees with Complainant’s contention that USPTO registrations evidences rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), which determined “that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”
Next, Complainant contends that the <bofacredit.com> domain name is confusingly similar to the BANK OF AMERICA mark as the domain name simply incorporates a common abbreviation of the BANK OF AMERICA mark, the descriptive term “credit”, and the “.com” gTLD. The Panel agrees that such alterations do not overcome a finding of confusing similarity under a Policy ¶ 4(a)(i) analysis. See Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network, D2004-0520 (WIPO Sept. 8, 2004) (finding confusing similarity where “[d]istinctive elements of the Complainant’s marks, notably the acronym ANP, are reproduced entirely in the domain name.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof 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 <bofacredit.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name or any variant of the BANK OF AMERICA mark, and that Complainant has not assented to Respondent’s registration of the disputed domain name or any variant of the BANK OF AMERICA mark. The Panel notes that relevant WHOIS information identifies “Reginald Benson II / Griar Group” as the registrant of record. See Compl., at Attached Ex. 8. Respondent failed to add any additional evidence to the record for the Panel’s consideration. Given the available evidence, the Panel finds no evidence to support finding that Respondent could be commonly known by the <bofacredit.com> domain name per Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor is Respondent making a legitimate noncommercial or fair use. Instead, the disputed domain name purportedly resolves (post-March 12, 2015) to an inactively held page displaying the error message “Service Unavailable.” See Compl., at Attached Ex. 12. Prior to March 12, 2015, Complainant asserts that the disputed domain name resolved to a GoDaddy.com page. See Compl., at Attached Ex. 11. Panels have found no rights or legitimate interests in a respondent whose disputed domain name constitutes an inactive holding. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Therefore, the Panel agrees that Respondent has no rights or legitimate interests in the <bofacredit.com> domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent engaged in an attempt to sell the disputed domain name to Complainant and a third-party for profit. See Compl., at Attached Ex. 13. The Panel agrees that such attempts to sell the disputed domain name supports findings of bad faith per Policy ¶ 4(b)(i). See State Farm Mutual Auto. Ins. Co. v. Donghui, FA 1594582 (Nat. Arb. Forum Jan. 12, 2015) (finding bad faith use and registration of the disputed domain names where respondent offered to sell the two disputed domain names to complainant trademark-owner for $800 each. [Holding] that $800 for each domain name, $1600 in total, was “obviously in excess of respondent’s out-of-pocket costs associated with the disputed domain names.”).
Pursuant to Complainant’s Exhibit 12 (displaying message: “Service Unavailable”), Respondent inactively held the disputed domain name. Panels agree that inactively held pages demonstrate bad faith per Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Further, the Panel agrees with the holding in Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000), in which the panel wrote: “Mere [failure to make an active use] of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.” Considering the available evidence, the Panel here finds that Respondent’s inactive holding constitutes bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had at least constructive knowledge of the <bofacredit.com> domain name. The Panel here finds that arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel finds here, however, that in light of the fame and notoriety of Complainant's BANK OF AMERICA mark, it is inconceivable that Respondent could have registered the <bofacredit.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel finds that given the use and the offer to sell the domain name to Complainant, Respondent shows actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and such actual knowledge supports findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bofacredit.com> domain name be TRANSFEERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 29, 2015.
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