Bank of America Corporation v. Alvaro
Collazo
Claim
Number: FA0403000248681
Complainant is Bank of America Corporation (“Complainant”),
represented by Larry C. Jones, of Alston & Bird, LLP,
101 S. Tryon St., Ste. 4000, Charlotte, NC 28280-4000. Respondent is Alvaro Collazo (“Respondent”), Manuel Oribe 2028, Tarariras,
Colinia 7000.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <bankofamerics.com>, <
bankofamericq.com>, <bankofameriva.com>, <
bankofamerixa.com>, < bankofameruca.com> and <vbankofamerica.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 19, 2004; the Forum received a hard copy of the
Complaint on March 22, 2004.
On
March 19, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain names <bankofamerics.com>, <
bankofamericq.com>, <bankofameriva.com>, <
bankofamerixa.com>, < bankofameruca.com> and <vbankofamerica.com>
are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
March 24, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 13, 2004 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@bankofamerics.com, postmaster@bankofamericq.com,
postmaster@bankofameriva.com, postmaster@bankofamerixa.com,
postmaster@bankofameruca.com, and postmaster@vbankofamerica.com by e-mail.
Having
received no 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.
On
April 28, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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. Respondent’s <bankofamerics.com>,
<bankofamericq.com>, <bankofameriva.com>, <bankofamerixa.com>,
<bankofameruca.com> and <vbankofamerica.com> domain
names are confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent does not have any rights or
legitimate interests in the <bankofamerics.com>, <bankofamericq.com>,
<bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com>
and <vbankofamerica.com> domain names.
3. Respondent registered and used the <bankofamerics.com>,
<bankofamericq.com>, <bankofameriva.com>,
<bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Bank of America, is the largest consumer bank in the United States and one of
the world’s best-known financial institutions. In September 1998, BankAmerica
merged with NationsBank, resulting in the foundation of Complainant.
BankAmerica was one of the world’s best-known financial and banking services
organizations at the time of the 1998 merger.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office for the BANK OF AMERICA mark (Reg. No. 853,860, issued July 30, 1968).
Complainant, and
one of its predecessors, BankAmerica Corporation, have exclusively used the mark
and trade name BANK OF AMERICA to identify their banking and financial
services. For many years prior to the merger, BankAmerica provided financial
and banking services worldwide and used the BANK Of AMERICA mark in connection
with its business. Due to longstanding and continuous use, Complainant’s BANK
OF AMERICA mark is well-known and respected.
Complainant’s
main website is operated at the <bankofamerica.com> domain name.
Respondent
registered the disputed domain names on September 17, 2003, December 30, 2003,
December 18, 2003, December 30, 2003, December 28, 2003, and December 30, 2003,
respectivly. Respondent is using the domain names to redirect Internet users to
a variety of third-party websites, including search services and websites that
offer financial services.
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
draw such inferences it 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 that it has rights in the BANK OF AMERICA mark through registration
with the United States Patent and Trademark Office and through the use of its
mark in commerce for the last twenty-six years. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <bankofamerics.com>,
<bankofamericq.com>, <bankofameriva.com>,
<bankofamerixa.com>, <bankofameruca.com> and
<vbankofamerica.com> domain names. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See 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); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered the domain names for commercial gain. Respondent’s domain names
divert Internet users wishing to search under Complainant’s BANK OF AMERICA
mark to Respondent’s commercial websites through the use of domain names that
are confusingly similar to Complainant’s mark. Furthermore, Respondent is
unfairly benefiting from the goodwill associated with Complainant’s mark.
Respondent’s practice of diversion, motivated by commercial gain, through the
use of a confusingly similar domain name evidences bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe on Complainant’s
goodwill and attract Internet users to Respondent’s website); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website).
Furthermore,
Respondent registered the <bankofamerics.com>,
<bankofamericq.com>, <bankofameriva.com>,
<bankofamerixa.com>, <bankofameruca.com> and
<vbankofamerica.com> domain names for the primary purpose of
disrupting Complainant’s business by redirecting Internet traffic intended for
Complainant to Respondent’s websites that directly compete with Complainant by
offering banking and financial services similar to Complainant’s services.
Registration of domain names for the primary purpose of disrupting the business
of a competitor is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See Lubbock
Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23,
2000) (concluding that domain names were registered and used in bad faith where
Respondent and Complainant were in the same line of business in the same market
area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb.
5, 2001) (finding that, given the competitive relationship between Complainant
and Respondent, Respondent likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion).
Furthermore,
Respondent has engaged in a practice called “typosquatting.” This practice
diverts Internet users who misspell Complainant’s mark to a website sponsored
by Respondent for Respondent’s commercial gain. Respondent is attempting to
divert Internet users intending to search under Complainant’s mark who misspell
the word “America” in Complainant’s mark. The practice of “typosquatting”
itself evidences bad faith registration and use of a domain name pursuant to
Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”); see also Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period
after the “www” portion of a web-address,” evidence that the domain name was
registered and used in bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bankofamerics.com>, <bankofamericq.com>,
<bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com>
and <vbankofamerica.com> domain names be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 5, 2004
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