Bank of America Corporation v. Digi Real
Estate Foundation
Claim
Number: FA0501000400529
Complainant is Bank of America Corporation (“Complainant”),
represented by Randel S. Springer, of Womble Carlyle Sandridge and Rice, PLLC, One West Fourth Street, Winston-Salem, NC 27101. Respondent is Digi Real Estate Foundation (“Respondent”), P.O. Box 7-5324, Panama
City, NA N7 8DJ Panama.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <bankamrica.com> and <wwwbancofamerica.com>,
registered with Bizcn.com, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 14, 2005.
On
January 17, 2005, Bizcn.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <bankamrica.com> and <wwwbancofamerica.com>
are registered with Bizcn.com, Inc. and that Respondent is the current
registrant of the names. Bizcn.com, Inc. has verified that Respondent is bound
by the Bizcn.com, Inc. 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
January 18, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 7, 2005 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@bankamrica.com and
postmaster@wwwbancofamerica.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 17, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Tyrus R. Atkinson, Jr., 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 <bankamrica.com> and
<wwwbancofamerica.com> domain names are confusingly similar to
Complainant’s BANK OF AMERICA, BANC OF AMERICA and BANKAMERICA marks.
2. Respondent does not have any rights or
legitimate interests in the <bankamrica.com> and <wwwbancofamerica.com>
domain names.
3. Respondent registered and used the <bankamrica.com>
and <wwwbancofamerica.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Bank of America Corporation, is the second largest banking company in the
world, and is well-known throughout the United States. Complainant operates over 5,700 banking
centers in 29 states including the District of Columbia. Complainant has used the BANK OF AMERICA
mark continuously in commerce since as early as 1928. Complainant also owns trademark registration rights for the BANK
OF AMERICA, BANC OF AMERICA and BANKAMERICA (e.g., Reg. No. 853,860, issued
July 30, 1968; Reg. No. 2,541,037, issued February 19, 2002; Reg. No. 965,288,
issued December 6, 1971, respectively).
Complainant also operates domain names containing the BANK OF AMERICA
family of marks. Specifically,
Complainant promotes its products and services at the <bankofamerica.com>
domain name.
Respondent
registered the <bankamrica.com> domain name on July 22, 2004 and <wwwbancofamerica.com>
domain name on July 31, 2004.
Complainant sent a cease and desist letter by electronic mail to the
registered owner of the disputed domain names on August 11, 2004. Respondent replied to these letters via
electronic mail requesting Complainant to “please initiate transfer
request.” Complainant has since
initiated a transfer request twice and has sent Respondent several electronic
mails requesting Respondent’s assistance, but has not received a response.
Respondent is
using the disputed domain names to redirect Internet users to active websites
containing links to a variety of goods and services, including financial and
lending providers such as <lendingtree.com> and <bankrate.com>. Additionally, these two websites are linked
to popular search categories and third party websites related to Complainant’s
business such as financial planning, business and finance, debt, loans, student
loans, stocks and credit cards.
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, BANC OF AMERICA and
BANKAMERICA marks as evidenced by Complainant’s registration with the United
States Patent and Trademark Office, in addition to continued use of its marks
in commerce. 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.).
Respondent’s
addition of the generic top-level domain “.com” to both disputed domain names
does not sufficiently distinguish the domain names from Complainant’s marks
pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("the addition of the generic top-level domain (gTLD) name ‘.com’ is . . .
without legal significance since use of a gTLD is required of domain name
registrants"); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to Complainant's registered
trademark GAY GAMES).
Additionally,
the omission of a period after “www” in the <wwwbancofamerica.com> domain
name does not sufficiently differentiate Respondent’s domain name from
Complainant’s BANC OF AMERICA mark, as the letters “www” are commonly
recognized as the abbreviation for “World Wide Web.” Respondent’s typosquatted version of Complainant’s mark does not
eliminate the confusingly similar nature of the disputed domain name pursuant
to Policy ¶ 4(a)(i). See Marie
Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the
letters "www" are not distinct in the "Internet world" and
thus Respondent 's <wwwmarieclaire.com> domain name is confusingly
similar to Complainant's MARIE CLAIRE trademark); see also Neiman Marcus
Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding
confusing similarity has been established because the prefix "www"
does not sufficiently differentiate the <wwwneimanmarcus.com> domain name
from Complainant's NEIMAN-MARCUS mark); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”).
Respondent’s
omission of spaces between the words “banc,” “of” and “america” is insufficient
to distinguish Respondent’s <wwwbancofamerica.com> domain name
from Complainant’s BANC OF AMERICA mark.
See Wembley Nat’l Stadium
Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain
name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see
also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb.
Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER
RE, “as spaces are impermissible in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”).
Furthermore, the
slight misspelling of the Complainant’s mark where the letter “e” was ommitted
from “america” in the <bankamrica.com>
domain name does not decrease the confusingly similar nature of the
disputed domain name from Complainant’s BANKAMERICA mark. Furthermore, the omission of the word “of”
also does not eliminate the confusing similarity between Respondent’s domain
name and Complainant’s BANK OF AMERICA mark. See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain name does not significantly change the overall impression of the mark); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb.
Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is
confusingly similar to Complainant’s mark, where Complainant holds the WEST JET
AIR CENTER mark); see also Wellness
Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16,
2001) (finding that the domain name <wellness-international.com> is
confusingly similar to Complainant’s “Wellness International Network”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent does not have any rights or legitimate interests in the
disputed domain names. Once Complainant
makes a prima facie case in support of its allegations, the burden
shifts to Respondent to show that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). Due to
Respondent’s failure to respond to the Complaint, the Panel will assume that
Respondent lacks rights and legitimate interests in the <bankamrica.com> and <wwwbancofamerica.com>
domain names. See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where Complainant has asserted that
Respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”).
Moreover, where
Complainant makes a prima facie showing and Respondent does not respond,
the Panel may accept all reasonable allegations and inferences in the Complaint
as true. See 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.”); see also Do the Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a
respondent to come forward to [contest complainant’s allegations] is tantamount
to admitting the truth of complainant’s assertion in this regard”).
Respondent is
using the <bankamrica.com> and <wwwbancofamerica.com> domain
names to redirect Internet users to a website featuring advertisements and
links to a variety of goods and services, including sites that offer the same
type of services that Complainant offers such as financial and lending
providers at <lendingtree.com> and <bankrate.com>. The websites are also linked to popular
search categories and websites related to Complainant’s business such as
financial planning, business and finance, debt, loans, student loans, stocks
and credit cards. Respondent’s use of
domain names that are confusingly similar to Complainant’s BANK OF AMERICA,
BANC OF AMERICA and BANKAMERICA marks to redirect Internet users interested in
Complainant’s products to a commercial website that offers similar financial
services is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use of the domain names pursuant to
Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored by Respondent hardly seems legitimate”); see
also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec.
31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to competitors of Complainant, was not a bona fide offering of
goods or services); see also Bank of Am. Corp. v. Out Island Props., Inc.,
FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of
infringing domain names to direct Internet traffic to a search engine website
that hosted pop-up advertisements was evidence that it lacked rights or
legitimate interests in the domain name).
Moreover,
Respondent has not offered any evidence to prove that Respondent is commonly
known by the <bankamrica.com> and <wwwbancofamerica.com> domain
names. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See 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); see
also 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one
has been commonly known by the domain name prior to registration of the domain
name to prevail").
Furthermore, Respondent’s <bankamrica.com> and
<wwwbancofamerica.com> domain names are typosquatted versions of
Complainant’s BANK OF AMERICA, BANC OF AMERICA and BANKAMERICA marks because it
takes advantage of a typing errors that users commonly make when searching on
the Internet such as omitting the letter “e” or eliminating the period between
the “www” and the domain name. The
Panel finds Respondent has no rights or legitimate interests in the
typosquatted versions of Complainant’s marks incorporated in the disputed
domain names. See Diners Club
Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat.
Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in
and of itself that Respondent lacks rights or legitimate interests in the
disputed domain name vis-à-vis Complainant); see also Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where
Respondent used the typosquatted <wwwdewalt.com> domain name to divert
Internet users to a search engine webpage, and failed to respond to the
Complaint); see also Guinness UDV N. Am, Inc. v. Dallas Internet Servs.,
D2001-1055 (WIPO Dec. 12, 2001) (finding the domain name <smirnof.com>
confusingly similar to Complainant’s SMIRNOFF mark because merely removing the
letter “f” from the mark was insignificant).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the disputed domain names, which incorporate Complainant’s marks,
for Respondent’s commercial gain.
Respondent’s domain names divert Internet users searching under
Complainant’s marks to Respondent’s website.
The Panel infers that Respondent is using the disputed domain names to
profit by advertising various services, including financial services similar to
those offered by Complainant.
Respondent’s infringing use of Complainant’s registered marks for
commercial gain is evidence of 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 Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith
where Respondent registered and used an infringing domain name to attract users
to a website sponsored by Respondent).
Additionally,
Respondent is using the disputed domain names to advertise links to websites
offering various financial services similar to those offered by
Complainant. Respondent’s use of Complainant’s
mark to advertise websites offering services similar to Complainant’s financial
services is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com,
FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s
sites pass users through to Respondent’s competing business); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain name to
promote competing auction sites); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from Complainant to a competitor’s website in
violation of Policy ¶ 4(b)(iii)).
Furthermore,
Respondent’s registration of misspelled versions of Complainant’s marks
incorporating simple typographical errors is evidence of Respondent’s
typosquatting and proves Respondent’s bad faith registration and use of the
disputed domain names. See Canadian
Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (“[t] absence of a dot between the ‘www’ and
‘canadiantire.com’ [in the <wwwcanadiantire.com> domain name is] likely
to confuse Internet users, encourage them to access Respondent’s site” and
evidenced bad faith registration and use of the domain name); see also Black &
Decker Corp. v. Azra 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); see also 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”).
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 <bankamrica.com> and <wwwbancofamerica.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
March 3, 2005
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