Bank of America Corporation v. Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1704001727047
Complainant is Bank of America Corporation (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofamericamerchantservices.com>, registered with Gransy, s.r.o. d/b/a subreg.cz.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2017; the Forum received payment on April 14, 2017.
On April 17, 2017, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <bankofamericamerchantservices.com> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 April 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2017 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@bankofamericamerchantservices.com. Also on April 17, 2017, 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 May 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" 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.
A. Complainant
Complainant made the following contentions
Complainant registered its BANK OF AMERICA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 853,860, registered Dec. 14, 1966), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 4. Respondent’s <bankofamericamerchantservices.com> domain name is confusingly similar to Complainant’s mark because it contains the BANK OF AMERICA mark in its entirety—less the spaces— and merely appends the descriptive wording “merchantservices” and the generic top-level domain gTLD “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its BANK OF AMERICA mark in any fashion, and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. 9 (WHOIS information). Further, Respondent is using the domain name to resolve to a website displaying generic links to third-party sites. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the <bankofamericamerchantservices.com> domain name in bad faith. Respondent attempts to disrupt the business of Complainant—conduct proscribed as bad faith under Policy ¶ 4(b)(iii)—by including competitors’ links on the resolving webpage. See id. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the BANK OF AMERICA mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Due to the fame of Complainant’s marks, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration. Respondent’s use of a privacy service to conceal its identity is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the banking industry.
2. Complainant has registered its BANK OF AMERICA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 853,860, registered Dec. 14, 1966) and numerous trademark registrations for this mark in the United States and throughout the world.
3. Respondent registered the disputed domain name on December, 30, 2009.
4. Respondent is using the domain name to resolve to a website displaying generic links to third-party sites 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."
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(f), 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 (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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends it has registered its BANK OF AMERICA mark with the USPTO (Reg. No. 853,860, registered Dec. 14, 1966), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 4. A USPTO registration confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the BANK OF AMERICA mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BANK OF AMERICA mark. Complainant argues that the <bankofamericamerchantservices.com> domain name is confusingly similar to Complainant’s mark because it merely appends the descriptive terms “merchant” and “services” and the gTLD “.com” to the fully incorporated mark without any spaces. Such alterations are not sufficiently distinguishing to overcome confusing similarity per Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names”). The Panel notes that the term “merchant services” refers to a service offered by Complainant’s banking business. See Compl., at Attached Ex. 8. As such, the Panel holds that Respondent’s domain name is confusingly similar to Complainant’s mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 (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 (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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BANK OF AMERICA mark and to use it in its domain name adding the descriptive words “merchant” and “services”;
(b) Respondent registered the domain name on December, 30, 2009;
(c) Respondent is using the domain name to resolve to a website displaying generic links to third-party sites offering competing services;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its BANK OF AMERICA mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence negating a finding that a respondent was commonly known by the domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel notes that the <bankofamericamerchantservices.com> WHOIS information of record lists a privacy service “WHOIS PROTECTION” as the registrant organization and “DOMAIN ADMIN” as the registrant. Therefore, the Panel holds that Respondent is not commonly known as <bankofamericamerchantservices.com>;
(f) Complainant submits that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent is using the resolving website to display links that compete with Complainant’s business. Such use is not recognized as a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (finding that, because the “[r]respondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). A screenshot of one of the alleged competing links’ resolving webpages is provided. See Compl., at Attached Ex. 10. Based on this evidence, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent is disrupting its business by attempting to divert potential customers away from Complainant to third-party websites linked on the website. A respondent disrupts a complainant’s business and therefore shows bad faith registration and use under Policy ¶ 4(b)(iii) when the disputed domain name’s resolving website displays links to Complainant’s competitors. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). As the Panel finds sufficient evidence that third party hyperlinks are in fact displayed on the disputed domain name’s resolving website, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Secondly, Respondent has registered and is using the <bankofamericamerchantservices.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and benefit from the goodwill of the BANK OF AMERICA mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends that the <bankofamericamerchantservices.com> domain name creates confusion as to the source, sponsorship, affiliation, or endorsement of its website for the purpose of attracting Internet traffic and benefiting from the goodwill of the BANK OF AMERICA marks. As such, the Panel concludes that Respondent created a likelihood of confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant also contends that in light of the fame and notoriety of Complainant’s BANK OF AMERICA mark, it is inconceivable that Respondent could have registered the <bankofamericamerchantservices.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP decisions tend not 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."). However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). A respondent has actual knowledge of a complainant’s rights in a mark when Complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s BANK OF AMERICA mark has created significant good will and consumer recognition and has been in use by Complainant as early as 1966. See Compl., at Attached Ex. 4. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the <bankofamericamerchantservices.com> domain name was registered.
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the BANK OF AMERICA mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamericamerchantservices.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 15, 2017
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