Bank of America Corporation v. Stop2shop
Inc.
Claim
Number: FA0501000400913
Complainant is Bank of America Corporation (“Complainant”)
represented by Randel S. Springer, of Womble, Carlyle, Sandridge & Rice, PLLC, One West Fourth Street, Winston-Salem, NC 27101. Respondent is Stop2Shop Inc. (“Respondent”), 2100-A North Federal
Highway, Hollywood, FL 33020.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwfleetkids.com>, registered with Wild
West Domains, 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 13, 2005, Wild West Domains, Inc. confirmed by email to the National
Arbitration Forum that the domain name <wwwfleetkids.com> is
registered with Wild West Domains, Inc. and that Respondent is the current
registrant of the name. Wild West Domains, Inc. has verified that Respondent is
bound by the Wild West Domains, 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 17, 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 email, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@wwwfleetkids.com by
email.
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 11, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwfleetkids.com>
domain name is confusingly similar to Complainant’s FLEETKIDS and other FLEET
marks.
2. Respondent does not have any rights or
legitimate interests in the <wwwfleetkids.com> domain name.
3. Respondent registered and used the <wwwfleetkids.com>
domain name 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. Complainant and its predecessors
have used the FLEET mark since at least as early as 1982 with banking and
financial services.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office for the FLEETKIDS mark (Reg. No. 2,853,264 filed July 21, 2003 and
issued June 15, 2004). Complainant and
its predecessors have used this mark in commerce since at least as early as
October 1998 for education and entertainment services providing online
educational financial games and activities and providing online educational
materials in the field of financial literacy and money management.
Complainant’s
main website for this endeavor is operated at <fleetkids.com>. Complainant’s website contains educational
materials and games designed to educate children about managing money and
understanding financial concepts.
Respondent
registered the <wwwfleetkids.com> domain name on July 5,
2004. Respondent is using the disputed
domain name to redirect Internet users to third party websites, which
predominantly offer the same types of services as Complainant.
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’s
registration for the FLEETKIDS mark with the United States Patent and Trademark
Office (“USPTO”) confirms Complainant’s rights in the mark. See 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.); see also 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 Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct.
18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to
demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis
for making the Complaint in the first place).
The <wwwfleetkids.com>
domain name is confusingly similar to Complainant’s FLEETKIDS mark because the
domain name incorporates Complainant’s mark in its entirety and simply adds the
letters “www” and the generic top-level domain (“gTLD”) “.com.” The mere additions of the letters “www” and
the gTLD “.com” to Complainant’s mark does not negate the confusing similarity
of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See
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”); see also 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 Sporty's Farm L.L.C. v.
Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied,
530 U.S. 1262 (2000) ("For consumers to buy things or gather information
on the Internet, they need an easy way to find particular companies or brand
names. The most common method of locating an unknown domain name is simply to
type in the company name or logo with the suffix .com").
Therefore,
Complainant has established that the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has
alleged that Respondent has no rights or legitimate interests in the domain
name that contains in its entirety Complainant’s mark. The Panel will assume that Respondent lacks
rights and legitimate interests in the disputed domain name, due to
Respondent’s failure to respond to the Complaint. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
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”); see also 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 Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
“domain names are so obviously connected with the Complainants that the use or
registration by anyone other than Complainants suggests ‘opportunistic bad
faith’”).
Respondent is
using the <wwwfleetkids.com> domain name to redirect Internet
users to a site that hosts links to a variety of websites, including sites that
offer the same types of goods and services that Complainant offers online. Respondent’s use of a domain name that is
confusingly similar to Complainant’s FLEETKIDS mark to redirect users
interested in Complainant’s products to a commercial website that offers
similar educational and game options and related services is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or
a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s
entire mark in infringing domain names makes it difficult to infer a legitimate
use"); see also Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links
to other websites, is not a legitimate use of the domain names); see also 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).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <wwwfleetkids.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Medline, Inc. v. Domain Active
Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb.
6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>]
domain name and its similarity to Complainant’s registered and distinctive
[MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent”); 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"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Respondent’s <wwwfleetkids.com>
domain name is an obvious misspelling of Complainant’s mark intended to
capitalize on a frequent Internet user mistake, forgetting to type a period
after “www.” The Panel finds that
Respondent lacks right or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). 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 Encyclopaedia Britannica, Inc. v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the
domain names are misspellings of Complainant's mark).
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
Respondent
intentionally registered a domain name, <wwwfleetkids.com>, that
contains in its entirety Complainant’s FLEETKIDS mark. Respondent has engaged in the practice of
typosquatting. Typosquatting, by
itself, is evidence of bad faith registration and use under the Policy. See Canadian Tire Corp., Ltd. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22,
2003) (holding that “[t]he 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
RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003)
(inferring that Respondent’s registration of the <wwwremax.com> domain
name, incorporating Complainant’s entire mark, was done with actual notice of
Complainant’s rights in the mark prior to registering the infringing domain
name, evidencing 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,” and are evidence that the domain name was registered and used in
bad faith).
Respondent is
using the <wwwfleetkids.com> domain name to advertise links to
educational and game-related websites.
Complainant’s business provides educational and financial games and
activities to individuals throughout the world. The Panel finds that, by creating confusion around Complainant’s
FLEETKIDS mark, Respondent is attempting to disrupt the business of a
competitor. Respondent’s use of a
domain name confusingly similar to Complainant’s mark to provide services similar
to Complainant’s goods and services is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See
EthnicGrocer.com, Inc. v. Unlimited
Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that
the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered the names primarily for the
purpose of disrupting Complainant's business); see also Hewlett Packard Co. v. Full Sys., FA
94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and used
the domain name primarily for the purpose of disrupting the business of
Complainant by offering personal e-mail accounts under the domain name
<openmail.com>, which is identical to Complainant’s services under the
OPENMAIL mark).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s registered mark in its entirety and deviates only with the
addition of the letters “www” and the gTLD “.com,” suggests that Respondent
knew of Complainant’s rights in the FLEETKIDS mark. Moreover, Complainant’s mark is registered with the USPTO. In addition, the disputed domain name
directs Internet users to a website that provides links to Complainant’s
competitors, which is further evidence of actual or constructive knowledge of
Complainant’s mark. Thus, the Panel
finds that Respondent choose the <wwwfleetkids.com> domain name
based on the distinctive qualities of Complainant’s mark, which is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); see also Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark
and the content advertised on Respondent’s website was obvious, Respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal
Register of the USPTO, a status that confers constructive notice on those
seeking to register or use the mark or any confusingly similar variation
thereof”).
Additionally,
Complainant has established 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 <wwwfleetkids.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
February 25, 2005
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